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Canadian Broadcasting Corp. v. Quon , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00006 - by Eric Macramalla

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Domain Name: radiocanada.ca
OutCome: Transfer Granted
Response Filed: Yes
Panellist: David Wotherspoon, Jacques A. Leger, Q.C., and Harold Margles

(Gowlings acted on behalf of the Complainant in these proceedings)

The Complainant Canadian Broadcasting Corporation/Société Radio-Canada is recognized as Canada's public broadcaster. It has become one of Canada's largest cultural institutions, providing Canadians from coast to coast with a national resource of, amongst other things, distinctively Canadian radio and television programming. The Complainant distributes radio and television programs via satellite, microwave and landline to 103 Complainant-owned stations, 1,164 Complainant rebroadcasters, 26 private affiliates and 282 affiliated or community rebroadcasters, and has also established a significant Internet presence through the use of well-known websites such as cbc.ca and radio-canada.ca.

The Registrant was an independent technology consultant providing services to the financial, media and entertainment sectors including the creation of white papers (guides for the design and implementation of technological infrastructure) and assisting in the design, implementation and support of network infrastructures.

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.

The Complainant relied on its common law rights in the RADIO-CANADA trade-mark, as well as its rights in the trade names SOCIETE RADIO-CANADA and RADIO-CANADA, and the Official mark RADIO CANADA INTERNATIONAL.

In ordering the domain name transferred, the Panel considered the surrounding circumstances when making its determination of bad faith registration. The Panel held that a number of factors served to support a finding of bad faith registration, including the Registrant's site remaining inactive for over two years, the Registrant having had constructive knowledge of the Complainant's rights, the Registrant's failure to respond to the Complainant's demand correspondence and the fact that the Registrant's domain name portfolio contained a number of unrelated domain names containing third party trade-marks, supporting the position that the Registrant had engaged in a pattern of bad faith registrations.

The Panel also held that as few as two domain name registrations was sufficient to establish a pattern of bad faith registration.

With regard to legitimate interest, the Registrant argued that it was also involved in the radio industry and had a right to the domain name. The Panel held that permitting Registrants to rely on intentional infringement to demonstrate a legitimate interest would be contrary to the intent of the CDRP.

This decision provides some assistance to trade-mark owners as it allows them to point to the surrounding circumstances in cases where the Registrant's activities may not fall squarely within one of the three indicators of bad faith outlined above. This decision also confirms that the CDRP provides protection for common law rights. As well, the Panel confirmed that as few as two domain names is sufficient to establish a "pattern" under the CDRP. This holding, which is consistent with findings under the Uniform Domain Name Dispute Resolution Policy , is significant as the CDRP does not define what constitutes a "pattern".

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