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CIRA Domain Name Decision Broadens Scope of Bad Faith
On November 15, 2011, a complaint made pursuant to the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy was successful, resulting in an order transferring the domain sunbrella.ca to the complainant. The complainant had registered SUNBRELLA as a trade-mark in Canada in 1972 and extensively used the mark and advertised its products. In June, 2011, the registrant obtained a registration for sunbrella.ca. He gave evidence that he conceived the name as a brand name for a new consumer product, although no evidence was given as to the nature of the product, or its stage of development.
The panel concluded that the registration of sunbrella.ca was done in bad faith, and that in determining whether there was bad faith, it was entitled to go beyond a strict interpretation of the four specifically enumerated categories of bad faith recognized by the policy. Ultimately, the registrant registered the domain name with an ultimate view to commercial gain, which use raised a likelihood of confusion with the complainant’s marks. While the strict language of the policy indicated that this would constitute bad faith if there was an actual website operating at the domain, and no such website had yet been posted, the panel relied on the fact that the policy included the phrase “without limitation”, which enabled the panel to find bad faith absent an explicit violation of the language of the policy.
For more information, please visit:
http://www.cira.ca/assets/Documents/Legal/Dispute/2011/00173-sunbrella-ca.pdf