| Seed Check Technologies Inc. v. Mantyka , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00022 - by Eric Macramalla
Domain Name: seedcheck.ca
OutCome: Transfer Denied
Response Filed: Yes
Panellist: Harold Margles, Bradley J. Freedman, and James E. Redmond
The Complainant was incorporated on July 22, 2002, and since that date had carried on business as a seed-testing laboratory. The Respondent was one of three co-owners of the business, and was a director, President and General Manager of the Complainant. On July 22, 2002, the Respondent registered the domain name seedcheck.ca in his own name.
In or about May 2004, differences arose as between the Respondent and the other two shareholders and directors of the Complainant. It is alleged by the Complainant that the Respondent was removed as President and as a director of the Complainant on May 31, 2004, and that, despite demands from the Complainant, he refused to transfer the domain name to the Complainant. The Complainant alleged that the Respondent maintained control over the domain name for the purpose of disrupting the Complainant's business, and that he had no legitimate interest in the domain name.
The Respondent argued that he was entitled to costs in these proceedings as the Complaint was brought unfairly.
Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), Complainants must establish three elements. Firstly, the disputed domain name must be confusingly similar to a mark in which the Complainant had, and continues to have, rights. Secondly, the domain name must have been registered in bad faith. Finally, the Registrant must have no legitimate interest in the domain name.
In denying the Complaint, the Panel held that the Complainant had failed to show prior rights, either by virtue of trade-mark use or trade name use:
In its complaint, the Complainant alleges that "Seed Check Technologies Inc. was incorporated July 22, 2002 and since that date carried on business under that trade name...". The Registrant registered the domain name on July 22, 2002, the same date as the Complainant was incorporated. The Complainant has tendered no evidence showing use of the trade name "Seedcheck" by it or any predecessor in title so as to establish any rights in the trade name "Seedcheck" prior to July 22, 2002, the date of registration of the domain name. The Complainant does state in its response to the Panel's Direction that it operated "under Seed Check Technologies Inc. since July 2002...", but the Complainant also acknowledges that "...the name seedcheck was not in formal existence until its (the Complainant's) incorporation." The Panel does not consider that this is sufficient evidence to satisfy the onus on the Complainant to show, on a balance of probabilities, that it had established Rights in the Mark "Seedcheck" prior to the registration of the domain name on July 22, 2002.
The Panel denied the Respondent's request for costs, finding that the proceedings were not commenced unfairly and without colour of right.
This case affirms the requirement that a Complainant trade-mark owner must have rights that predate the domain name registration. The contested legal issues appeared better handled by the Courts and as noted by the Panel, court proceedings were already under way.