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Alberta Alcohol and Drug Abuse Commission v. Akshay Khanna, British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00065 - by Eric Macramalla

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Domain Name: aadac.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Eric Macramalla

The Complainant was the owner of the AADAC Official Mark. The Complainant registered the domain name aadac.com which resolved to the Complainant's website. The domain name in question had been registered and was made to resolve to a website hosted by DomainSponsor.com, a pay-per-click website displaying links to third party websites.

The Registrant did not file a Response to the Complaint, and accordingly the Complainant elected as per Rule 6(5) of the CIRA Domain Name Dispute Resolution Rules to reduce the three member Panel to a single member Panel.

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a successful Complainant must establish that the disputed domain name is confusingly similar with a mark in which it had rights, that the domain name was registered in bad faith and that the Registrant does not have a legitimate interest in the domain name.

The Panel held that the domain name was confusingly similar with the Complainant's mark as the disputed domain name was identical to the Complainant's mark.

The Panel held that the domain name had been registered in bad faith pursuant to paragraphs 3.7(b) and (c) of the Policy.

In particular, the Complainant provided evidence that the Registrant had engaged in a pattern of registering domain names in order to prevent the Complainant from registering it pursuant to paragraph 3.7(b) of the CDRP. In finding that the Registrant had engaged in a pattern of abusive domain name registrations, the Panel relied on the Registrant's registrations of goodyeartires.ca and ottawalynx.ca.

 

The Panel was of the view that paragraph 3.7(b) of the Policy should be given an expansive interpretation that is consistent with the intention of the Policy to provide redress from abusive domain name registrations:

In any event, the Panel is further of the view that paragraph 3.7(b) of the Policy should be given an expansive interpretation that is consistent with the intention of the Policy to provide redress from abusive domain name registrations.

Cybersquatters routinely register multiple domain names that constitute intentional misspellings of owner marks (i.e., typosquatting), or register domain names that may not otherwise appeal to a mark owner. In these cases, a registrant has not sought to "prevent" a complainant mark owner from registering certain domain names, nor has a complainant been prevented from registering said domains. Rather, the registrant may be stockpiling these domains, or using them to redirect end users to unaffiliated sites with a view to reaping a commercial advantage by capitalizing on end user confusion.

In such a case, to conclude that a registrant could escape the reach of paragraph 3.7(b) of the Policy on the basis that an intention to deprive the mark holder of the domain name cannot strictly be shown only encourages a registrant to misappropriate third party marks as domain names that would not have otherwise been sought to be secured by a complainant.

Given the right circumstances, a registrant could completely escape the reach of the Policy notwithstanding an extensive pattern of abusive registrations. For example, a registrant could own multiple domain names that constitute intentional misspellings of third party marks and simply be pointing them to inactive websites. In such a case, a complainant could not be said to have been prevented from registering the disputed domain names, as these intentionally misspelled domain names are not ones it would have sought to register. Similarly, without an active site, the complainant would not be in a position to establish that the registrant was a competitor, nor may it be in a position to establish that the registrant registered the domain name to sell for a profit, as per paragraphs 3.7(c) and (a) of the Policy, respectively.

This could not have been the intention of the Policy, which is designed to address clearly abusive and unauthorized domain name registrations in a cost-effective and timely manner without recourse to costly and lengthy court proceedings.

Of course, the Panel may consider the surrounding circumstances when considering bad faith. Nevertheless, with respect to the interpretation of paragraph 3.7(b) of the Policy, the approach should be a pragmatic one, sensitive to the practices of cybersquatters and the commercial realities related to domain name registrations.

Given the expansive interpretation, the Panel believes should be accorded the Policy, a mere intention on the part of a registrant to obstruct a mark owner together with two or more unauthorized domain name registrations should be sufficient to satisfy paragraph 3.7(b) of the Policy. Indeed, this has been a position taken in cases decided pursuant to the UDRP, which employs language similar to paragraph 3.7(b) of the Policy.

Further, contrary to paragraph 3.7(c), the Registrant had made himself a competitor of the Complainant by appropriating a domain name confusingly similar to that of the Complainant, and then pointing it to a customized Internet portal containing links to competitors of the Complainant. The Panel concluded that the Registrant not only knew this diversion would be disruptive, but intended it to be so. The Panel noted that to be considered a "competitor" for the purpose of the Policy, it was only necessary that the Registrant provide a means for end users to access competitors of the Complainant; it was not necessary that the Registrant himself be a direct competitor of the Complainant.

The Panel held that the Registrant did not have a legitimate interest in the domain name.

Accordingly, the Complainant was successful and the domain name was ordered transferred.

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