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Domain Name Dispute Decided for ontariocollege.ca
In OCAS Application Services Inc. v. iREx Corp., the Canadian Internet Registration Authority (“CIRA”) held that although OCAS, the complainant, had an honest but mistaken belief that it had common law trade-mark rights to its registered domain name, ONTARIOCOLLEGES.CA, it had “not discharged the burden to establish that it had rights in a mark upon which the registered domain name might infringe, and therefore that the ‘confusingly similar’ inquiry was not justiciable.”
The Ontario College Application Service (“OCAS”) is an Ontario corporation established in 2001 in order to provide a centralized system for college applications in Ontario. It claimed common law rights in the mark ONTARIOCOLLEGES.CA and had registered it as a domain name on March 5, 2002. iREx, the Registrant, is an Ontario company that is in the business of obtaining generic domain names and providing for their use by advertisers. It registered ONTARIOCOLLEGE.CA on February 14, 2003. The Complainant alleges that the Registrant’s domain name is confusingly similar to its mark.
The 3-member CIRA panel reasoned that, “mere registration of a domain name will not secure trademark rights in a domain name.” The registrant has to provide evidence that they have actually used the domain name in association with the goods and services. Although OCAS started using the ONTARIOCOLLEGES.CA website in 2002, it was revealed that the website in fact merely contained a message stating that the website was down. OCAS also filed insufficient evidence of its print publications containing its domain name in 2002. The Panel did not order the disputed domain name transferred to OCAS.
For additional information, visit:
http://www.cira.ca/assets/Uploads/00130-ontariocollege.ca.pdf