The recent decision of Guitar Center Inc v Robert Piperni (“
To address bad faith domain name registrations, the .ca registry provides for a relatively quick and inexpensive domain name dispute resolution process under the CIRA Domain Name Dispute Resolution Policy (CDRP). The CDRP is modeled after the UDRP and they both require a complainant to establish three basis elements:
- the domain name is confusingly similar to a trademark in which the complainant has rights;
- the domain name was registered in bad faith; and
- the registrant has no legitimate interest in the domain name.
However, there are several important differences between the CDRP and UDRP. One key difference is that only persons who meet the Canadian Presence Requirements have standing to file a complaint. A second key difference is that the CDRP requires that the complainant has rights in
Up until 2011, the CDRP contained a narrow definition of trademark “rights”, requiring sales of wares or provision of services in
The complainant, Guitar Center, Inc., is the world’s largest retailer of musical instruments with a significant reputation spanning more than 50 years. The registrant was associated with a competing Canadian musical instrument retailer who had engaged in a long pattern of bad faith registration of domain names corresponding to third party trademarks in the same field. The main issue arose from the fact that the domain name was registered in 2002, which was several years before the complainant commenced direct sales of musical instruments in
The evidence showed that prior to 2002, the complainant had i) a US website displaying the mark that was accessible to Canadians and providing detailed product advice and information, ii) advertisements for the mark on a Canadian radio station near the US border to encourage cross border shopping, and iii) a reputation in Canada through spill-over advertising from US media, cross border shopping to the US, and references in Canadian newspaper media.
In considering the issue of prior “rights”, the Panellist acknowledged the complainant’s argument that rights under the CDRP can be demonstrated not only by showing use of a trademark in Canada prior to registration of the disputed domain name, but also through any other basis for “rights” in a trademark supported by the Trademarks Act or Canadian jurisprudence, provided those “rights” pre-date the registration of the domain name.
The Panellist appears to have accepted the following principles, each of which may give rise to trademark “rights” under the CDRP:
- a website that is accessible to Canadians, displays the trademark and provides some benefit to Canadians (i.e. detailed product advice and information) constitutes use of the trademark in
- trademark advertising in
Canadato promote a service accessible to Canadians constitutes use of the mark in ; and Canada
- a mere reputation for the trademark in
can establish trademark rights sufficient to succeed in a passing off action or trademark opposition proceeding. Canada
For further information, please contact a member of our firm’s Trademarks 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.