Volume IV

Issue : 11: June 1, 2006

• Global Sting Operation Targets Major Internet Fraud Schemes
• U.S. Veterans Personal Information Compromised After Home Burglary
• The Co operators Group Wins Domain Name Dispute Over "Cooperator.ca"
• WestJets $15.5 Million Apology to Air Canada
• Wi LAN Files Patent Suit Against D Link
• Complainant Obtains Domain Name Transfer Based on Parent Companys Mark
• Bank Makes Incorrect Assumptions About DNS Listings
• Amazons "One Click" Patent Back Before U.S. Patent Office
• Record Industry Sues XM Satellite Over iPod like Device

Home > Volume IV > Issue 11: June 1, 2006 > Complainant Obtains Domain Name Transfer Based on Parent Companys Mark

Complainant Obtains Domain Name Transfer Based on Parent Companys Mark

The Canadian Internet Registration Authority (“CIRA”) regulates “.ca” domain names, and users of “.ca” domain names agree by contract to have domain name disputes resolved before an arbitration panel. This panel renders a decision based on CIRA policies, rules and prior panel decisions.

In April, The Canadian Internet Registration Authority (“CIRA”) regulates “.ca” domain names, and users of “.ca” domain names agree by contract to have domain name disputes resolved before an arbitration panel. This panel renders a decision based on CIRA policies, rules and prior panel decisions.

In April, 2006 a one member panel dealt with a complainant seeking the transfer of a domain name (www.pre-paidlegalservicesinc.ca) when it did not own or use the mark in dispute. The difficult question facing the panel was that the mark in question was used as the U.S. parent company’s trade name. The test applied was whether the mark was confusingly similar to a mark in which the complainant had rights.

The complainant provides pre-paid legal services, and it is related to a U.S. based parent company that holds a trademark on “Pre-Paid Legal Services & Design”. This is a U.S. trademark that neither the complainant nor its parent company had registered in Canada.

The panel held that the use of the trade name of an entity other than the complainant is not fatal to the complaint because there is no requirement that the mark be used in Canada by the complainant. The requirement is simply that the mark be used in Canada “by a person … for the purpose of distinguishing the wares, services or business of that person”.

The complainant also adduced some evidence in the form of news stories that the registrant was wanted in the U.S. for fraudulently selling pre-paid legal services, as well as a complaint to the U.S. parent company about the registrant holding himself out as a broker of Pre-Paid Legal Services. The domain name resolved to a site offering pre-paid legal services.

The domain name was ordered transferred on the basis that: the complainant had rights in the mark (which is the name of the complainant’s U.S. parent); the domain name is confusingly similar to the mark; the registrant had no legitimate interest in the mark; and that he registered the mark in bad faith.

For a copy of the decision, visit:

http://www.cira.ca/en/dpr-decisions/00056-pre-paidlegalservicesinc.ca.pdf