Want to stay current on e–commerce law? Sign up for Email Newsletter.
CIRA Confirms that Prior Use in a Domain Name is Necessary Under the Policy
The complainant, the District of West Kelowna (West Kelowna), a municipality in British Columbia which formally became the “District of West Kelowna” on 29 January 2009, filed a complaint under the Canadian Internet Registration Authority (CIRA) against the Registrant Baremetal.com Inc., a business owned by a businessman living in West Kelowna. The Registrant currently uses the domain name “WESTKELOWNA.CA” (the Domain Name) for a website that purports to operate as a portal for businesses and organizations in the area. He registered the Domain Name on April 2, 2007.
West Kelowna claimed that the Domain Name was confusingly similar to its marks; the Registrant had no legitimate interest in the Domain Name; and the Registrant registered the Domain Name in bad faith. It sought an order requiring the Domain Name to be transferred to it on these bases.
The CIRA panel concluded that there was not enough evidence submitted to conclude that the Complainant had “prior” rights to the Domain Name. The clear implication in the CIRA policy is that, “unless a municipal name is specifically listed in the Canadian Geographical Names Database (CGNDB) at the time the domain name registration is sought, the name is not reserved.” The Complainant did not meet the requirements of the policy, in that “West Kelowna” was not registered in the CGNDB at the time the Domain Name was registered.
As a result, the CIRA panel, after considering the Complainant’s evidence and arguments, found that the Complainant had not proven, on a balance of probabilities, that West Kelowna was a “Mark” within the meaning of the CIRA policy prior to the Domain Name registration date. It also found that the Complainant did not file sufficient evidence of prior use and pre-existing rights in the Mark so as to prove that prior to the date of registration of the Domain name by the Registrant, the Complainant had used the Mark in association with carrying out, promoting or advertising its activity.
For a copy of the decision, visit:
http://www.cira.ca/assets/Uploads/00137-westkelowna.ca.pdf