Turkish translation of mark is not confusingly similar, says CIRA

In Canadian Education Centre Network v Ince (July 21 2009), a Canadian Internet Registration Authority (CIRA) panel has refused to order the transfer of the domain name 'kanadaegitimmerkezi.ca' since it was not satisfied that the domain name would be considered to be confusing with the second complainant's mark.
The first complainant, the Canadian Education Centre Network (a Canadian company which promotes Canada as a destination for international students) owns a registration for the trademark CEC NETWORK (and its French translation RESEAU DES CEC) in Canada. The second complainant was CEC Turkey-KANADA EGITIM MERKEZI, a Turkish organization which operates an education centre and hosts Canadian education fairs in Turkey.
The registrant, Ismail Ince, is a competitor of the complainants in relation to educational services. However, the scope of his services are limited to Turkey. Ince registered the domain name 'kanadaegitimmerkezi.ca' on November 11 2008. 'Kanada Egitim Merkezi' is the Turkish translation of 'Canadian Education Centre'.
To succeed under the CIRA Domain Name Dispute Resolution Policy (CDRP), a complainant must establish that:

  • the domain name at issue is confusingly similar to a trademark in which it has rights that predate the registration date of the domain name;
  • the registrant registered the domain name in bad faith; and
  • the registrant does not have a legitimate interest in the domain name.
The second complainant’s complaint was dismissed since it did not meet the Canadian Presence Requirements of the CDRP. The second complainant was a Turkish organization operating solely in Turkey; it had no legal representative in Canada and did not own a Canadian registration for a mark which was relevant to the proceedings.
With regard to the first requirement under the CDRP, the first complainant provided evidence that it had used the mark CEC NETWORK, together with the mark KANADA EGITIM MERKEZI, since 2002. However, the latter mark had been used exclusively in Turkey. The panel concluded that the evidence made it abundantly clear that at no time had KANADA EGITIM MERKEZI been used in Canada. Accordingly, the first complainant could not rely on any rights that it had in the trademark KANADA EGITIM MERKEZI in the proceedings.
With respect to the trademark CEC NETWORK, the first complainant argued that the mark, being an English translation of the domain name 'kanadaegitimmerkezi.ca', was confusingly similar to the domain name. The panel framed the question as whether the domain name and the mark were confusingly similar in Canada. The panel concluded that, in appearance, sound or idea suggested, the domain name was not confusingly similar to the mark, even if they were translations of each other.
In reaching its conclusion, the panel did not appear to focus on the translation issue and, instead, compared the marks as it would any two marks. Although it is clear that the mark CEC NETWORK is not confusingly similar to the phrase 'Kanada Egitim Merkezi', it may be so when the fact that they have the same meaning in different languages is considered. 
Because Canada is a bilingual nation, and the Trademarks Act creates a national register of trademarks, confusion must be analyzed with respect to both the English and French language. There is a body of Canadian case law which holds that a French (or English) translation of a trademark registered in the other language is confusing with that mark. With respect to other languages, the result depends on the language of the translation and how many people would understand and be confused by a translated version of the mark. 

For example, in Cheung Kong (Holdings) Ltd v Living Realty Inc, the Federal Court of Canada held that confusion was to be assessed by looking to the average consumer of the services associated with the opposed mark (in that case, the Toronto Chinese community), and not the average Canadian. This was partly because the applicant’s evidence was that it targeted its services to the Toronto Chinese community. In that case, the court found that the opponent’s mark (set out in Chinese characters) was confusing with the applicant’s mark, which was in the English language.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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