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Cheap Tickets and Travel Inc. v. Emall.ca Inc. , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00004 - by Eric Macramalla

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Domain Name: cheaptickets.ca
OutCome: Transfer Denied;
Reverse Domain Name Hijacking Not Found

Response Filed: Yes
Panellist: Bradley J. Friedman, David R. Haigh, Q.C., and Patrick Flaherty

The Complainant had used the business name "Cheap Tickets and Travel Inc." and was the registered owner of the Canadian trade-marks CHEAP TICKETS and CHEAP TICKETS AND TRAVEL & Design. The Complainant offered travel agency-related services since 1996.

The Registrant was in the business of collecting and using domain names to structure joint ventures with other parties, leasing domain names to other parties, or creating its own websites using the domain names as part of an Internet portal called Emall.ca.

Only after the parties had engaged in correspondence and negotiations did the Registrant resolve the domain name to a website that was purported to be part of the Emall.ca travel network, through which the Registrant sold or facilitated the sale of air travel, car rental and hotel reservation services.

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's trade-mark registration for CHEAP TICKETS matured to registration on July 18, 2002, subsequent to September 16, 1999, the registration date of the domain name. The trade-mark registrations claimed a date of first use of July 1, 1997, which preceded the domain name registration.

The Panel noted that if a Complainant's trade-mark matured to registration prior to the domain name registration date, a Complainant is not required to establish distinctiveness or use; the mere registration of the trade-mark is sufficient to establish "Rights" in the "Mark".

On the other hand, if the Complainant's mark is an unregistered trade-mark or a trade-mark that matured to registration after the domain name registration date, the Complainant must establish trade-mark use that predates the domain name registration.

Given that the Complainant failed to establish that the domain name was confusingly similar to its trade-mark in which it had prior rights, the Panel did not go on to consider the issues of bad faith or legitimate interest.

The Panel then considered the issue of reverse domain name hijacking, which if found, could result in an order that the Complainant pay the Registrant an amount of up to $5,000.00 to defray the costs incurred by the Registrant in preparing for and filing material in the proceedings.

In light of the Complainant's registered CHEAP TICKETS trade-mark, the Panel held that the Complaint was not brought "unfairly and without colour of right" as prescribed by paragraph 4.6 of the CDRP. Accordingly, the Panel concluded that the Complaint was not brought in bad faith and the claim for reverse domain name hijacking failed.

Unless a trade-mark matures to registration prior to the registration date of the impugned domain name, the Complainant is required to show that its mark has acquired distinctiveness. This conclusion, while consistent with the language of the CDRP, provides an enterprising Registrant with the opportunity to register domain names that are the subject of proposed use applications in Canada without consequence under the CDRP. This is rather unsettling.

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