Cheap Tickets loses in first contested '.ca' case

Canada

A three-person panel appointed by the British Columbia International Commercial Arbitration Centre has issued its decision in Cheap Tickets and Travel Inc v Emall.ca Inc, the first contested arbitration involving a '.ca' domain name. The panel declined to transfer 'cheaptickets.ca' to the complainant.

The panel was appointed in accordance with the Canadian Internet Registration Authority's Domain Name Dispute Resolution Policy (CDRP), which is modelled on the Uniform Domain Name Dispute Resolution Policy.

The complainant, Cheap Tickets, has operated a travel agency since 1996 and became the registered owner of the Canadian trademark CHEAP TICKETS in July 2002. The registrant, Emall.ca, collects domain names for the purpose of leasing them to others or creating websites for inclusion in a web portal. In September 1999 Emall registered 'cheaptickets.ca' for use as a travel-related website.

Because Cheap Tickets did not own a registered trademark when the domain name was registered, it had to rely on common law trademark rights in its claim. In interpreting the CDRP's use of the word 'trademark', the panel referred to the Canadian Trademarks Act, which requires that a trademark be distinctive.

The panel held that Cheap Tickets had not proved that it used the CHEAP TICKETS mark before September 1999 to distinguish its wares, services or business from those of other traders. Rather, it had used the trademark CHEAP TICKETS AND TRAVEL DESIGN and the phrase 'Cheap Tickets and Travel'. The panel held that the descriptive nature of the term 'cheap tickets', and the addition of the words 'travel' and 'design', made this mark materially different from the CHEAP TICKETS mark. The panel declined to make any findings regarding the other elements required under the CDRP, and dismissed the complaint.

The panel also dismissed Emall's contention that the complaint had been brought in bad faith.

Robert Deane, Borden Ladner Gervais LLP, Vancouver

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