Down, but not out – initial adverse decision not a bar to future recovery of .ca domain name
July 26, 2017

by: Daniel Anthony and Timothy Stevenson

A pair of recent decisions under the Canadian Internet Registration Authority (“CIRA”) Domain Name Dispute Resolution Policy (“CDRP”) demonstrate that a trademark owner who fails to obtain a domain name transfer at a first panel hearing may nonetheless achieve a favourable outcome upon a second panel hearing. The cases in question, PicMonkey, LLC and PicM (Cayman) LP v Whois Privacy Services Inc, CDRP Dispute No 00326, and PicMonkey International Limited and PicMonkey LLC v Whois Privacy Services Inc, CDRP Dispute No 00337, also highlight the importance of submitting carefully prepared evidence that establishes the owner’s prior rights to the trademark in Canada.

In the second of these cases, the Complainant, PicMonkey LLC, was successful in recovering the domain name, and was represented by Daniel Anthony and Timothy Stevenson of Smart & Biggar’s Domain Names & Internet Law Group.   

Background

As part of its dispute resolution mandate, CIRA provides for a summary arbitration procedure to deal with bad faith .ca domain registrations. In order to be eligible to file a complaint, a Complainant must satisfy certain Canadian presence requirements, such as being a Canadian entity or the owner of a relevant Canadian trademark registration. In order to succeed against a domain Registrant, the Complainant must establish the following three-part test:

  1. The Registrant’s domain name is confusingly similar to a trademark in which the Complainant had rights in Canada prior to the domain name being registered.  
  2. The Registrant has no legitimate interest in the domain name registration.
  3. The Registrant has registered the domain name in bad faith. 

A successful complaint can result in deletion of the registration or transfer of the domain name to the Complainant.

Unsuccessful at first instance

The Complainant in this matter, PicMonkey LLC, operates a highly popular online image editing service and is the owner of registered trademarks in Canada and the United States. Claiming prior Canadian trademark rights to the mark PICMONKEY, it sought to recover the domain name <picmonkey.ca>, which was registered on April 10, 2012 by Whois Privacy Services Inc., just two months after the launch of the Complainant’s actual website <picmonkey.com>.

The first CDRP panel ruled against PicMonkey LLC, finding that it had not established trademark rights in Canada in the PICMONKEY mark prior to the registration of the domain name, and thus had not shown that the domain name was confusing with its trademark at the relevant time. The date of the domain name registration, April 10, 2012, was of critical importance because it pre-dated the Canadian trademark registration date by several years, and the underlying application had been filed based on proposed use of the mark rather than prior use. In these circumstances, it was necessary for PicMonkey LLC to demonstrate actual use of its trademark in Canada prior to the domain registration date. The brand monitoring service employed to file the initial complaint failed to adduce such evidence and relied solely on the trademark application and eventual registration.

Complainant successful upon filing a further complaint with new evidence

Fortunately, the initial adverse result was not fatal to PicMonkey LLC’s efforts to claim the domain name corresponding to its mark. There is no principle of res judicata in CDRP proceedings, and previous panels have held that a further complaint may be filed between the same parties regarding the same domain name.

With a new legal strategy in hand, PicMonkey LLC obtained a favourable outcome. Counsel was able to provide evidence establishing two points that were crucial for success:

  1. Evidence of use of the trademark PICMONKEY in Canada prior to the domain name registration date of April 10, 2012; and
  2. Evidence tending to show that the Registrant had acted in bad faith in registering the domain name in question. 

The evidence provided showed that, prior to April 10, 2012, the PicMonkey website had been accessed in excess of 41 000 times by Canadian IP addresses, PicMonkey services had been sold to Canadian customers, and PicMonkey advertising through social media had reached Canadian followers.  This was sufficient to establish pre-existing rights in the mark in Canada.  

Furthermore, counsel was able to provide convincing evidence that the Registrant was acting in bad faith by taking full advantage of the rights accorded to eligible Complainants under the CDRP Policy, which allow Complainants to obtain from CIRA a list of all the domain name registrations held by that Registrant. In this particular case, several of the other domain names owned by the Registrant were those of well-known third party brands, a finding that tends to show that the Registrant is “cyber-squatting” and thus acting in bad faith in registering the domains.

The second panel had no difficulty in resolving the complaint in PicMonkey LLC’s favour, and granted transfer of the domain name to PicMonkey LLC.

Conclusion

It is useful for brand owners to keep in mind that an adverse initial decision from the CDRP does not necessarily prohibit the ultimate retrieval of a .ca domain by way of a second proceeding. However, in order to achieve efficient results in summary arbitration procedures, it is vital to retain legal counsel who understand the type of evidence that is required for success and who can navigate the rules to the client’s full advantage.

For further information, please contact a member of our firm’s Domain Names & Internet Law Group.      

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.  

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