'YellowPage.ca' decision highlights strict bad-faith test

A Canadian Internet Registration Authority (CIRA) panel's decision in the case of Yellow Pages Group Co v Coolfred Co confirms the difficulty of establishing bad faith in a complaint under the CIRA Domain Name Dispute Resolution Policy (CDRP).

The complainant, Yellow Pages Group Co (YPG) is a Canadian corporation which owns various Canadian trademark registrations for YELLOW PAGES in association with, among other things, business and telephone directories. YPG has used the YELLOW PAGES mark in Canada since 1948. YPG also owns a trademark registration for YELLOWPAGES.CA and has used that mark since October 18 2000 when the domain name encompassing that mark was registered with CIRA.

The registrant, Coolfred Co, registered the domain name 'YellowPage.ca' on November 8 2000. From some period until 2006 the domain name resolved to a site parked with DomainSponsor.com, which provides various internet search functions. YPG sent two cease and desist letters in early 2006 to Coolfred regarding use of the domain name in association with the parked site. Coolfred failed to respond to either letter. However, following receipt of those letters, the domain name ceased to resolve to the parked site. At the time of the decision, the domain name did not resolve to any website.

On January 2 2007 YPG initiated a proceeding under the CDRP. A response was duly filed by Coolfred, which alleged that YPG had, contrary to Paragraph 4.6 of the CDRP, commenced the complaint "for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer" of the domain name.

In order to be successful under the CDRP a complainant must establish that

• the domain name at issue is similar to a trademark in which it has rights which 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 panel had no trouble in finding that YPG had rights in YELLOW PAGES which pre-dated the registration of the domain name. In determining whether the domain name was confusingly similar to the YELLOW PAGES trademark, the panel was of the view that, to the average internet user, based on first impression and imperfect recollection, the domain name so nearly resembles the YELLOW PAGES mark in appearance, sound or the ideas suggested so as to be likely to be mistaken for it.

The panel found that Coolfred had no legitimate interest in the domain name. It took note of evidence provided by Coolfred that it had not taken any steps to have the domain name resolve to DomainSponsor.com. Coolfred produced evidence that this arrangement was entered into by its registrar, without its knowledge. As well, Coolfred provided correspondence from DomainSponsor.com that established that Coolfred did not have an account with that company. The panel found that Coolfred had not used the domain name within the meaning of the CDRP. Accordingly, it could not have a legitimate interest in the domain name.

Bad faith is narrowly prescribed under the CDRP by an exhaustive list of three factors. A domain name is registered in bad faith if, and only if, at least one of the three following factors is established:

• the registrant registered the domain name primarily for the purpose of transferring it to the complainant, or its licensor or licensee, or a competitor thereof, for an amount in excess of the registrant's actual costs in registering the domain name;
  
  
• the registrant registered the domain name in order to prevent the complainant, or its licensor or licensee, from registering the domain name, provided that the registrant has engaged in a pattern of registering domain names to prevent others that have rights in marks from registering those marks as domain names; or
  
  
• the registrant registered the domain name primarily for the purpose of disrupting the business of the complainant, or its licensor or licensee, which is a competitor of the registrant.

The panel found that YPG was unable to establish that the registration of the domain name was in bad faith within the meaning of the CDRP. Among other things, The panel noted that as Coolfred had not used the domain name, it could not be a competitor of YPG.

Since bad faith is an essential element under the CDRP, the panel found that YPG had not made out a case for relief and the panel declined to transfer the domain name to it. This case serves to exemplify the difficulty of prosecuting a proceeding under the CDRP, especially establishing bad faith.

With respect to Coolfred's claim regarding bad faith of YPG, the panel was not prepared to make such a finding. It specifically noted that YPG clearly had rights in a mark which was confusingly similar to the domain name and was able to establish that Coolfred had no legitimate interest in the domain name.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto