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Complainant Loses Fight Over Airs.ca
A recent domain name decision under the Canadian Internet Registration Authority’s Dispute Resolution Policy considers how to address claims that a trade-mark assignment is invalid. The domain name at issue in Clover Gifts, Inc. v. George Morrison, GM Consulting Services was AIRS.CA (registered by the Respondent on June 18, 2003). Both parties were involved in the business of selling perfume and incense.
The Complainant asserted that it had obtained an assignment of the trade-mark AIRS on June 12, 2003 (the trade-mark application was filed on April 26, 2002). The Respondent challenged the legitimacy of that assignment under U.S. law (which the Respondent argued was the proper law of the assignment), questioned the authenticity of the signatures on the assignment, and made an allegation of undue influence.
The panel held that the issues raised by the Respondent required a forum that receives evidence and can properly and thoroughly address issues of credibility. These issues could not be resolved in a domain name hearing. Instead, the panel took the essential facts as presented by the Complainant, and proceeded on the basis that the Complainant was the proper assignee of the AIRS trade-mark. On this basis, the Panel held that the AIRS.CA domain name was essentially identical to the AIRS trade-mark, and that the Complainant had met the first element of its case.
However, the Complainant failed to establish that the Respondent did not have a legitimate interest in the domain name or that the Respondent had registered the domain name in bad faith. The Respondent and the company with which he was associated had been involved in the perfume and incense business and with the trade-mark AIRS for many years. Therefore, although the parties were in competition, this alone did not lead the panellist to find that the Respondent did not have a legitimate interest in the domain name. Similarly, the Respondent’s long involvement in the use of AIRS commercially and in domain names militated against a finding of bad faith.
For these reasons, the complaint was dismissed.
For a copy of the decision, visit:
http://www.cira.ca/en/dpr-decisions/00041-airs.ca.pdf
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