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Complainant Loses Fight over Toro.ca
On August 25, 2005, a decision under the Canadian Internet Registration Authority (“CIRA”) Domain Name Dispute Resolution Policy, upheld the registration of a “.ca” domain name that was confusingly similar to a registered trade-mark since it was not registered in “bad faith”. The Registrant had registered “toro.ca” as part of his business creating email addresses that reflect a person’s first and last name (i.e. paul@martin.ca). A well known American lawn care product manufacturer, the Toro Company, complained on the basis of their registered trade-mark.
In order to succeed in a proceeding against the registrant of a domain name, the complainant must establish, on a balance of probabilities, that the domain name is confusingly similar to a trade-mark registered by the complainant, that it was registered in bad faith, and they must also provide some evidence that the registrant has no legitimate interest in the domain name. While the Complainants in this case were successful in proving that the domain name, toro.ca, qualified as near resemblance to its trade-mark to satisfy the confusingly similar requirement, they failed to establish that the registration of the domain name was done in bad faith.
Bad faith can be proven if the registrant is using the domain name to acquire money from the complainant, or its competitors, if the registrant is involved in a pattern of registering domain names to prevent persons who have rights in trade-marks to register the domain names, or if the registrant has registered the domain name to disrupt the business of one of its competitors. The Complainant relied on the third element in order to prove bad faith. When the Panellist applied the CIRA dispute resolution policy, as well as an earlier Panellist’s decision (Trans Union LLC v. 1491070 Ontario Inc.), it found that the Complainant failed to establish that the Registrant was a competitor of the Complainant, and thus, did not grant the requested domain name transfer.
The third requirement, legitimate interest, was not addressed by the Panellist.
For a copy of the panel decision, visit:
http://www.cira.ca/en/dpr-decisions/00039-toro.ca.pdf
For a copy of the Policy, visit:
http://www.cira.ca/official-doc/CDRP_Policy_2003-12-04_en_final.pdf