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21 August 2017
A pair of recent decisions under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy (CDRP) demonstrate that a trademark owner which fails to obtain a domain name transfer at a first panel hearing may nonetheless achieve a favourable outcome upon a second panel hearing. The cases in question, PicMonkey, LLC v Whois Privacy Services Inc (CDRP Dispute 00326) and PicMonkey International Limited v Whois Privacy Services Inc (CDRP Dispute 00337), also highlight the importance of submitting carefully prepared evidence that establishes the owner's prior rights to the trademark in Canada.
In the second of these cases, the complainant, PicMonkey LLC, was successful in recovering the domain name.
As part of its dispute resolution mandate, the CIRA provides for a summary arbitration procedure to deal with bad faith '.ca' domain registrations. In order to be eligible to file a complaint, a complainant must satisfy certain Canadian presence requirements, such as being a Canadian entity or owning a relevant Canadian trademark registration. In order to succeed against a domain registrant, the complainant must establish the following three-part test:
A successful complaint can result in deletion of the registration or transfer of the domain name to the complainant.
The complainant in this matter, PicMonkey LLC, operates a popular online image editing service and is the owner of registered trademarks in Canada and the United States. Claiming prior Canadian trademark rights to the mark PICMONKEY, it sought to recover the domain name 'picmonkey.ca', which Whois Privacy Services Inc registered on April 10 2012, just two months after the launch of the complainant's actual website 'picmonkey.com'.
The first CDRP panel ruled against PicMonkey LLC, finding that it had not established trademark rights in Canada in the PICMONKEY mark before the registration of the domain name, and thus had not shown that the domain name was confusing with its trademark at the relevant time.
The date of the domain name registration, April 10 2012, was of vital importance because it pre-dated the Canadian trademark registration date by several years, and the underlying application had been filed based on proposed use of the mark rather than prior use. In these circumstances, PicMonkey LLC had to demonstrate actual use of its trademark in Canada before the domain registration date. The brand monitoring service employed to file the initial complaint failed to adduce such evidence and relied solely on the trademark application and eventual registration.
The initial adverse result was not fatal to PicMonkey LLC's efforts to claim the domain name corresponding to its mark. There is no principle of res judicata in CDRP proceedings and previous panels have held that a further complaint may be filed between the same parties regarding the same domain name.
With a new legal strategy in hand, PicMonkey LLC obtained a favourable outcome. Counsel provided the following evidence establishing two points that were vital for success:
The evidence provided showed that, before April 10 2012:
This was sufficient to establish pre-existing rights in the mark in Canada.
Further, counsel provided convincing evidence that the registrant had acted in bad faith by taking full advantage of the rights accorded to eligible complainants under the CDRP policy, which allow complainants to obtain from the CIRA a list of all domain name registrations held by that registrant. In this particular case, several of the other domain names owned by the registrant were those of well-known third-party brands, a finding that tends to show that the registrant was cybersquatting and thus acting in bad faith in registering the domains.
The second panel had no difficulty in resolving the complaint in PicMonkey LLC's favour and granted it transfer of the domain name.
It is useful for brand owners to keep in mind that an adverse initial decision from the CDRP does not necessarily prohibit the ultimate retrieval of a '.ca' domain by way of a second proceeding. However, in order to achieve efficient results in summary arbitration procedures, it is vital to retain legal counsel who understand the type of evidence that is required for success and can navigate the rules to the client's full advantage.
For further information on this topic please contact Daniel Anthony or Timothy Stevenson at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email (firstname.lastname@example.org or email@example.com). The Smart & Biggar/Fetherstonhaugh website can be accessed at www.smart-biggar.ca.
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