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Priceline.com Successful in Dispute over Priceline.ca
On November 21, 2005, a three person panel convened under the Canadian Internet Registration Authority (“CIRA”) Domain Name Dispute Resolution Policy ordered that the domain name Priceline.ca be transferred from its registrant to the complainant, Priceline.com Incorporated (“Priceline”), an Internet-based travel service owning the trade-mark for Priceline and Priceline.com.
In May of 2003, Priceline sent an email to the registrant of Priceline.ca alleging infringement of its trade-marks and demanding that the domain be transferred to Priceline immediately. The registrant denied any wrongdoing. The domain name initially remained dormant, but eventually was brought online and contained direct links to two of Priceline’s major competitors, Expedia.ca and Tripadvisor.ca. Priceline offered $5,000 to purchase the domain name, but the registrant refused to accept less than $40,000 for it. Priceline subsequently commenced proceedings under the CIRA Domain Name Dispute Resolution Policy.
To obtain an order for the transfer of a domain name under the CIRA Domain Name Dispute Resolution Policy, a complainant must establish on a balance of probabilities that: (i) a domain name is “confusingly similar” to a complainant’s trade-mark; (ii) the domain name was registered in bad faith; and (iii) the registrant has no legitimate interest in the domain name. On the last requirement, the registrant bears the evidentiary burden of showing that it does have a legitimate interest in the domain name.
Priceline established the first element on the basis that the domain name and the trade-mark at issue were identical, and accordingly confusingly similar within the meaning of the policy. Priceline established bad faith based on evidence that established a prima facie case that the domain name was registered with the primary purpose of disrupting Priceline’s business. The panel considered several factors, but put significant weight on a chat room posting by the registrant seeking information and advice on how to bolster a claim that he was not acting in bad faith. The panel also relied on prior authority (Lee Valleys Tools Limited v. Pilfold Ventures Inc.) indicating that inclusion of links to a complainant’s competitors suggests an intention to disrupt the complainant’s business. The panel further found that the registrant did not meet the burden of establishing that he had a legitimate interest in the domain name. Accordingly, the panel directed the registrant to transfer the domain name to Priceline.
For a copy of the decision, visit: