Volume VIII

Issue : 6: March 18, 2010

• Court Upholds Contempt Finding Against EchoStar in TiVo Patent Dispute
• Apple Sues Google Phone Maker HTC for Android Patent Infringement
• HP Sues Over Ink Cartridges
• Amazon 1 Click Patent Survives Re examination
• Microsoft Loses First Appeal to $240 Million Infringement Case
• CIRA Confirms That Use in Canada is Necessary to Meet the Definition of a Mark
• Career Agents Network Domain Name Dispute

Home > Volume VIII > Issue 6: March 18, 2010 > CIRA Confirms That Use in Canada is Necessary to Meet the Definition of a Mark

CIRA Confirms That Use in Canada is Necessary to Meet the Definition of a Mark

The complainant, the “Canadian Education Centre Network” (“CECN”), a Vancouver based, not-for-profit organisation that markets Canada as a destination for international students, filed a complaint under the Canadian Internet Registration Authority (“CIRA”) against the Registrant (“Ince”), who operates a Turkish company offering similar services to those provided by the CECN. The scope of the Registrant’s services is limited to Turkey, unlike the Complainant organisation, which operates in many countries.

The dispute centers around the domain name “KANADAEGITIMMERKEZI.CA”, which CECN claims is confusingly similar to its marks.  CECN owns the registered mark CEC NETWORK RESEAU des CEC. It has also used the mark “KANADA EGITIM MERKEZI” in advertising since 2002, although only evidence of use in Turkey was submitted with respect to the latter mark.

The CIRA panel concluded that the requirements to establish confusing similarity had not been met. In reaching this decision, the 3-member panel made two conclusive findings. Firstly, they held that because the mark KANADA EGITIM MERKEZI was not used in Canada by the complainant to distinguish its wares or services from those offered by another, KANADA EGITIM MERKEZI could not qualify as a Mark as per paragraph 3.2(a) or (b) of the Policy. However, CECN was found to have rights in the mark, CEC NETWORK RESEAU des CEC, as it had registered the Mark with CIPO.

As a result, the panel found the domain name, KANADAEGITIMMERKEZI.CA, and the complainants Mark, CEC NETWORK RESEAU des CEC, to not be confusingly similar in appearance, sound or ideas. Although KANADA EGITIM MERKEZI is a rough Turkish translation of “Canada Education Centre”, by using a Canadian frame of reference as required when evaluating the “confusingly similar” criterion, the Panel held that “it is difficult to imagine an internet user in Canada confusing the two, nor is any evidence submitted to support such a conclusion.” The Complaint was dismissed.

For a copy of the decision, visit:

http://www.cira.ca/assets/Uploads/00134-kanadaegitimmerkezi-ca.pdf