Sponsor denied domain name including title of sponsored event

Canada

The extent to which a sponsor can secure rights to a domain name which incorporates the name of the sponsored event was brought into question in the case of The Bank of Nova Scotia v Working Word Co-operative Ltd (Case D2010-0167, April 8 2010).

Caribana is an annual cultural festival held in Toronto, Canada every summer. It celebrates Caribbean culture, food and music and is the largest cultural festival of its kind in North America. The showcase event of the festival is a massive street parade which attracts close to one million spectators. A Canadian trademark registration for CARIBANA issued in 1977 to the original organizing committee, Caribbean Cultural Committee, for use in association with a range of entertainment services related to the festival. The registration is now owned by the current organizing committee of the festival, Caribana Arts Group.

The complainant, The Bank of Nova Scotia (Scotiabank), is one of the five largest banks in Canada and became the title sponsor for Caribana in 2008. Scotiabank alleged that it is licensed by Caribana Arts Group to use the CARIBANA trademark. In fact, the event is promoted as 'Scotiabank Caribana'.

On April 21 1997 the respondent, Working Word Co-operative Ltd, registered the domain name 'caribana.com'. Working Word is a magazine publisher which, in 1993, published the first official Caribana festival guide. Working Word alleges that it registered the domain name with the full knowledge of the Caribbean Cultural Committee to provide information to the public about the festival. In addition, Working Word alleged that Caribana Arts Group was not the beneficial owner of the CARIBANA mark.

At the time of the dispute, the domain name 'caribana.com' resolved to a website which provided information about the Caribana festival. However, it also provided information about an unrelated music festival which is held at the same time as the Caribana festival and is sponsored by a competitor of Scotiabank.

In order to succeed in a dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP), a complainant must prove that:

  • the domain name at issue is identical or confusingly similar to a trademark in which the complainant has rights;
  • the registrant has no rights or legitimate interest in respect of the domain name; and
  • the domain name has been registered and is being used in bad faith.

The single panellist under the UDRP had no difficulty in concluding that the domain name was confusingly similar to the CARIBANA mark. The panellist deferred considering legitimate interest until he had dealt with bad faith since, in his opinion, many of the facts relevant to the determination of whether Working Word had a legitimate interest in the domain name were also relevant to the determination of bad faith.

The panellist concluded that Scotiabank had failed to establish that Working Word had registered the domain name in bad faith. Specifically, the panellist noted that, in 1997 (ie, when the domain name was registered) Scotiabank had no association with the CARIBANA mark and was not a licensee of the mark. Further, the panellist accepted the evidence of Working Word that, when it registered the domain name, it did so with the approval of Caribbean Cultural Committee, the then festival organizing committee and owner, at the time, of the Canadian trademark registration for CARIBANA.

The ruling made no mention of whether Scotiabank, as a title sponsor, had a right to the domain name. Working Word had filed evidence that Scotiabank was committed to sponsor the festival only through 2012. Other major Canadian banks had sponsored the festival at various times during its history. If a title sponsor has a license agreement which allows it to take ownership of the underlying domain name, then it will likely be able to establish that entitlement. Absent such a right, it will be difficult for a title sponsor to establish that it may retain ownership of a domain name related to the sponsored event.

Antonio Turco, Blake, Cassels & Graydon LLP, Toronto

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