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AOL Domain Name Dispute
In its decision released in AOL Canada Inc. v. L. Jason Anderson, Liam Grouse dated August 5, 2010, the Canadian Internet Registration Authority (“CIRA”) heard a dispute with regards to the engadget.ca, luxist.ca, and weblogsinc.ca domain names. The registrants registered the disputed domain names in February of 2005. The Complainant, AOL, did not register a Canadian trademark in any of the domain names, but instead claimed that it has common law rights to the marks.
In order to establish common law rights to the marks under s. 7 of the Trade-marks Act, AOL must show that there was: a) an established reputation for the trade-marks in Canada, as used in association with wares and/or services; (b) that the alleged infringer has used the marks in such a manner as to be likely to deceive the relevant public as to the source of whose wares and/or services; and (c) that damage has been caused by the alleged infringer’s activities.
The CIRA found that the Registrants registered all the marks in bad faith and had no legitimate interest in any of the marks. However, with respect to the ENGADGET mark, the CIRA found that AOL had been making use of the mark in Canada prior to the registrants’ registration of engadget.ca, although there were only “two or three incidences of use”. Nevertheless, the CIRA concluded that AOL had “established rights in and a reputation regarding the mark.” As a result, the CIRA ordered the engadget.ca domain name to be transferred to AOL, but its claims as to the LUXIST mark and the WEBLOGSINC mark were dismissed.
For additional information, visit:
http://www.cira.ca/assets/Uploads/00157-engadget.ca.pdf