CIRA panel orders costs for attempted reverse hijacking of 'forsale.ca'
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In Globe Media International Corporation v Bonfire Development Inc (April 15 2009, revised reasons released on July 22 2009), a three-member panel of the Canadian Internet Registration Authority (CIRA) unanimously denied a transfer under the CIRA Domain Name Dispute Resolution Policy (CDRP) of the disputed domain name 'forsale.ca' to the complainant. Furthermore, for the first time under the CDRP, the panel fined the complainant for attempting to reverse hijack the domain name.
The decision involved the same domain name and the same complainant as the 2006 decision in Globe Media International Corporation v Dawn Internet Telephony Systems Inc. In that decision, Globe Media International Corporation was unsuccessful against the prior owner of the 'forsale.ca' domain name. However, the registrant let the registration lapse in early 2007. As soon as it became available for re-registration, registrar Baremetal purchased the domain name and later re-sold it to Bonfire Development for almost C$30,000.
Globe Media sought to purchase the domain name from Bonfire Development for C$5,000; when this failed, it brought a CDRP complaint. In its complaint Globe Media asserted its registered trademark WWW.FOR-SALE.CA. The mark was registered on January 21 2005, over two years after the domain name was first registered.
Under the CDRP, Globe Media had to establish that:
- the domain name 'forsale.ca' was confusingly similar to marks in which Globe Media had prior rights;
- the registrant Bonfire Development had registered the domain name in bad faith; and
- Bonfire Development had no legitimate interest in the domain name.
With respect to the three elements, the CIRA panel concluded that Globe Media had pre-existing rights dating back to 2005, compared with Bonfire Development’s 2007 domain name registration, and that the mark and domain name were confusingly similar.
However, the panel was unable to conclude that the generic and commonly used term 'for sale' could support a bad-faith allegation. This finding was made notwithstanding evidence led by the complainant that the registrant engaged in cybersquatting activities and that the complainant had a relationship with Baremetal.
Regarding the third element, the panel found that the complainant had not provided sufficient evidence of a lack of legitimate interest.
Based on its findings regarding bad faith and legitimate interest, the panel refused the transfer of the 'forsale.ca' domain name to the complainant.
The successful registrant then asked the panel to make a finding of reverse domain name hijacking. To substantiate a reverse hijacking allegation under the CDRP, the registrant must prove, on a balance of probabilities, that the complaint was commenced for the purpose of attempting, unfairly and without colour of right, to obtain a transfer. In such circumstances, the panel may order the complainant to pay up to C$5,000 dollars to defray the costs incurred in preparing for and filing material in the proceeding.
The panel reviewed the 'without colour of right' requirement and noted that the existence of a confusing trademark has always been an answer to defeat a claim of reverse hijacking. However, in this case the generic term 'for sale', together with a failed prior CDRP complaint by the same complainant and evidence that the complainant had engaged in “serious and profound abuse of the trademark regime”, moved the panel to negate any possible 'colour of right' argument. In particular, the panel noted that the complainant had engaged in filching, noting that Globe Media had registered domain names for famous trademarks ('versace.ca', 'mentos.ca', 'zantac.ca' and 'smirnoff.ca') and filed trademark applications afterwards to legitimize the domain name registrations (WWW.VERSACE.CA, WWW.MENTOS.CA, WWW.ZANTAC.CA and SMIRNOFF). The panel also noted that a complaint brought by Johnson & Johnson against Globe Media in respect of the 'zantac.ca' domain name was successful (see "CIRA orders transfer of 'zantac.ca' to Johnson & Johnson").
Therefore, the panel concluded that the complaint was a serious attempt at reverse domain name hijacking and ordered the extraordinary remedy of costs against the complainant. The amount of the penalty remains to be determined after detailed submissions from the registrant.
Yuri Chumak, Cameron MacKendrick LLP, Toronto
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