CIRA panel rules that evidence of actual confusion is needed under CDRP

Canada
In a dispute between AM Ford Sales Ltd and Canada One Auto Group over the domain name 'autocan.ca', a Canadian Internet Registration Authority (CIRA) panel has considered the test to determine whether a domain name is “confusingly similar” to a trademark under the CIRA Domain Name Dispute Resolution Policy (CDRP). 

The complainant, AM Ford, had been using the trademark AUTOCANADA.COM since at least 1996 in association with its new and used vehicle sales and leasing business. The registrant, Canada One Auto Group (now AutoCanada Inc), registered the domain name 'autocan.ca' in February 2006 for use in association with its franchised automobile dealership group, which operated or managed 22 dealerships across Canada.

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 pre-date 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.
With respect to whether a disputed domain name is similar to a trademark in which a complainant has rights, a complainant must establish that the registrant’s '.ca' domain name is “confusingly similar” to a mark in which it had rights prior to the date of registration of the domain name at issue. 

AM Ford was able to establish that it had rights in the AUTOCANADA.COM mark as of the date of the registration of the domain name. The panel’s considerations relating to whether the domain name was “confusingly similar” is of interest. 

The CDRP has a comparatively narrow definition of when a domain name is “confusingly similar” to a mark. The term 'confusingly similar' is not used in Canadian trademark law; the term has been adopted from the Uniform Domain Name Resolution Policy (UDRP). A domain name is “confusingly similar” to a mark if it so nearly resembles it in appearance, sound or ideas suggested by the mark as to be likely to be mistaken for the mark. This differs from other domain name dispute regimes, such as the UDRP, which provide no specific guidance as to what is considered identical or confusingly similar.

The language of the CDRP test borrows from the provision of the Canadian Trademarks Act governing 'prohibitive marks', which precludes the use as a trademark of any mark identical or nearly identical to an insignia used by governments or public authorities. The 'resemblance' test is based on appearance, sound or ideas suggested by the mark. Although this test considers one of the five factors generally considered under the traditional likelihood of confusion test relevant to ordinary trademarks, resemblance is usually, but not always, narrower than confusion.

The other four factors under the 'confusion test' (ie, distinctiveness, length of use, nature of goods or services, and nature of trade) are by implication omitted from the CDRP. It may be inferred that CIRA intended that an analysis of confusing similarity under the CDRP be limited to the resemblance test, in contrast to the absence of express limitation and other domain name dispute regimes. However, in practice, there has been inconsistency in the test applied under the CDRP. For example, early decisions used a likelihood of confusion test instead of the resemblance test. An increasing number of recent decisions have adopted the resemblance test. However, there is no clear consensus, as this decision shows.

In this case, the panel adopted a test for confusing similarity which stated that:

a generally accepted principle when applying the test of confusion is looking at the trademarks from the point of the unwary consumer - comparing similarities as opposed to differences. Can the consumer be easily misled by error or otherwise - and perhaps not even know?

The panel used this as a starting point and went further by attempting to incorporate certain of the elements required by the concept of resemblance in the CDRP, specifically appearance, sound or idea. 

The panel then concluded that this test required AM Ford to present evidence of such an unwary consumer being confused by a resemblance between the trademark and the domain name at issue in at least one of the three terms of appearance, sound or ideas. Having found that there was no evidence before it of such confusion, the panel held that AM Ford had not succeeded in showing that the disputed domain name was confusingly similar to the trademark AUTOCANADA.COM.
What is interesting about this decision is the requirement that a complainant file evidence of actual confusion. Although evidence of actual confusion is obviously helpful, the CDRP does not require actual confusion. Even if there is no evidence of confusion, the fact that there is a likelihood of such confusion is sufficient to ground a finding of confusing similarity. By setting an onus of actual confusion, this panel has rendered it exceedingly difficult, if not virtually impossible, for any complainant to be able to establish confusing similarity under the CDRP.
 
Antonio Turco, Blake Cassels & Graydon LLP, Toronto

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