Post-registration activity not to be taken into account in determining bad faith

Canada
In Warren Miller Entertainment Inc v Willi Vogl & Associates (November 15 2010), a sole panellist under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy (CDRP) has denied the request to transfer the domain name 'warrenmiller.ca'.

The complainant, Warren Miller Entertainment Inc, is a company based on the persona of well-known ski filmmaker Warren Miller. It produces magazines, feature films and other media.

On July 17 2001 Warren Miller and the registrant, Willi Vogl & Associates, entered into a film distribution agreement, whereby Vogl would be the exclusive Canadian distributor of Warren Miller feature films. After the relationship between the parties deteriorated, Warren Miller requested a transfer of the domain name. Vogl refused the request, and Warren Miller lodged a complaint with CIRA on September 22 2010. Vogl provided no response to the complaint.

In order to succeed in its complaint under the CDRP, Warren Miller had to establish the following three criteria:
  • The domain name 'warrenmiller.ca' was confusingly similar to a mark in which Warren Miller had prior rights;
  • Vogl had registered the domain name in bad faith; and
  • Vogl had no legitimate interest in the domain name.
From the evidence submitted, the panellist concluded that, at the time of registration, Warren Miller had a well-known unregistered mark that was confusingly similar to the domain name.

With respect to the second criteria, the CDRP provides three explicit categories of bad faith. As Vogl registered the domain name as a licensee of Warren Miller, the panellist found that the registration did not fall within any of the categories of bad faith. Specifically, the panellist found that Vogl, at the time of registration, was acting with the full approval of Warren Miller and was registering the domain name for legitimate good-faith purposes. Although Vogl had continued to use the domain name after the expiry of the licence, the panellist concluded that an examination of post-registration activity should not be taken into account when determining the existence of bad faith. According to the panellist, such an analysis is beyond the scope of the CDRP. Additionally, the refusal to transfer the domain name was found to be grounded in a larger contractual dispute between the parties.

In examining the third criteria, the panellist found that, as a licensee of Warren Miller at the time of registration and for a time thereafter, Vogl had a legitimate interest in the domain name. Further, the panellist commented that an examination into the termination of the licence agreement to ascertain the legitimacy of continued use of the domain name was beyond the factual and interpretive legal considerations of a CIRA panel, as a panel must decide only on the basis of the CIRA Policy and Rules and the evidence pertinent to those criteria.

Having found Warren Miller unsuccessful in establishing that Vogl had registered the domain name in bad faith, and having found some evidence that Vogl had a legitimate interest in the domain name, the panellist refused the transfer.

Chad Matheson, Cameron MacKendrick LLP, Toronto

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