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Jockey International Finds Winner
The multinational underwear company Jockey successfully acquired control of the domain name jockey.ca from Ingenuity, an Australian company known to acquire domain names similar to popular trademarks, a CIRA Panel has found.
Acquired in 2003, Ingenuity registered jockey.ca and used it as a third-party portal to sell adult products and services. Jockey International already owned jockey.com and had numerous JOCKEY-related trademarks registered and used in Canada for almost 80 years.
The Panel found the jockey.ca registration confusingly similar to Jockey’s trademarks, and the jockey.ca domain name was neither descriptive nor a generic label of Ingenuity’s services, and therefore had no basis for retaining the domain name.
The Panel noted that operating a confusing domain name in such a way as to induce its purchase can be evidence of “bad faith”, but that could not be found in this case given Ingenuity’s eight-year ownership. Nonetheless, the simple act of preventing an established trademark from owning the .ca extension, in light of Ingenuity’s previous attempts as domain name squatting, was sufficient to ground a finding of bad faith. Ingenuity did not contest the complaint.
For further information, please visit: https://service.clearservice.com/itcan/campaignimages/1/www/newsletters/092211.pdf