First Canadian Reverse Domain Hijacking Finding

April 20, 2009 · Print This Article

Globe Media International Corporation tried to grab the generic domain ForSale.ca from Bonfire Development, Inc., through a CDRP proceeding (the Canadian equivalent of the UDRP) and failed.  Not only did it fail, but it resulted in Canada’s first ever finding of Reverse Domain Hijacking.

Background

In January of this year, the domain ForSale.ca dropped.  After it was caught, it was purchased by Bonfire Development for $29,000 CDN.

Trademark

The plaintiff had a trademark on the domain For-Sale.ca.  Although one might ask how they managed to trademark that term, the CDRP does not allow the panel to go behind the trademark.  In the circumstances, the panel found that the domain was confusingly similar to the trademark.

Bad Faith

Next, the panel analysed whether the domain was registered in bad faith.  They found that it was not, and made some statements that I consider very positive.  They state:  “the disputed domain is a generic term over which the Complainant in this particular case cannot claim exclusivity.  This is so despite being the owner of a trade-mark that is confusing with the domain name.  The term “for sale” is clearly and obviously a commonly used term by businesses and members of the public to say the least, and is one over which the Complainant would be hard pressed to assert a monopoly.”

It’s clear that the Panel understands what a generic domain is and the importance of a generic name being avaialable to all members of the public.  Kudos to them for this.

The Panel further stated:  “There is no question that the Respondent, or related parties, have been found in the past to have engaged in the practice of cyber-squatting.  In particular, Shaun Pilford, who appears to be related to the Respondent, is known to domain name panels.  However, this is not relevant to this particular case… While the Panel does not endorse the Respondent’s unauthorized domain name registrations, it needs to be proven that the Respondent was cyber-squatting in this case.”

That’s good news too.  Too often in UDRP decisions, if you lose one, you’re at high risk of losing all future cases because you’ve been branded a cybersquatter.  The Panel is correct just to look at the case before it, not the reputation of the parties.

Reverse Domain Name Hijacking

The Complainant had previously tried to get this domain before it dropped via the CDRP and failed.  Now it failed a second time and the Respondent asked for a finding of reverse domain name hijacking.

The Panel found that the Complainant has a history of registering trademarks for .ca domains of well known brands.  The Complainant had registered Versace.ca, Mentos.ca, Zantac.ca, Smirnoff.ca and also filed trademark applications for Versace.ca, Mentos.ca, Zantac.ca and Smirnoff.ca.  The Panel found that the Complainant had an extensive history of abusing trademarks to try to give it rights to domains it should not have, including in this case.

Adding all of this to the fact that the domain is generic, the Panel found that this was Reverse Domain Name Hijacking and in fact stated that the Complainant appears to have engaged in filching.

Costs have yet to be decided, but the CDRP allows cost awards of up to $5,000.

Congrats to lawyer for the respondent Zak Muscovitch for obtaining this finding!

Comments

11 Responses to “First Canadian Reverse Domain Hijacking Finding”

  1. Patrick McDermott on April 20th, 2009 4:27 pm

    Hi,

    Are you familiar with the CDRP case involving CheapTickets.ca?

    Domain Name lawyer Zak Muscovitch successfully fought off an attempt by a trademark holder of “Cheap Tickets” to get the domain.

    The case then went to Court.

    Zak Muscovitch was also successful in getting the Court to cancel
    the “Cheap tickets” trademark.

    If interested,you can download it here:
    http://www.dnattorney.com/article.doc

  2. admin on April 20th, 2009 4:34 pm

    Hi Patrick – yes, I’m very familiar with the case. Zak’s a real hero because of it.

  3. Martin on April 20th, 2009 5:37 pm

    Great news and decision. Thanks for sharing.

    Where did you hear about this? I can’t find it on CIRA’s website

  4. robb on April 20th, 2009 6:37 pm

    Looks like the finding was bang on, ‘for sale’ is a super generic term. How could they have found otherwise?

  5. admin on April 20th, 2009 10:08 pm

    @Martin – the decision just came out. It should be CIRA’s website soon.

  6. Domain Development on April 21st, 2009 8:01 am

    Jeff,

    Thanks for posting this. I think it is interesting to note this as well:

    14. The domain name FORSALE.CA lapsed and became available for re-registration on January 3, 2009. The name was immediately registered on the same day by Tom Brown (“Brown”), an individual (acting in his capacity as an individual) who happened to work
    for the domain name registrar BareMetal.com. Brown ignored an offer from the Complainant inquiring about the availability of the name on that same day, i.e., January 3, 2009.
    15. The domain name was purchased for $29,900 by the Respondent on January 12, 2009, which it paid in two installments of $14,995.

  7. Elevator on June 25th, 2009 6:35 am

    Please Can any one advito make it me on how I can upgrade my domains after purchase? to make it attract sales.

  8. Elevator on June 25th, 2009 6:38 am

    Sorry for the above errors on my typographical errors.
    what i mean is i need somebody/experts to teach me on how i can make my domains fruitful after being registered them.

  9. admin on June 25th, 2009 12:57 pm

    Elevator, you can’t really do to much to make a domain better. You can develop a website on it, but then you’d be selling it as a website or business rather than a domain.

    If you are just looking to sell a domain, you can list it in all the major domain marketplaces, submit it to upcoming domain auctions, and also contact potential endusers about purchasing the domain.

  10. SEO Company on July 1st, 2009 9:39 am

    Nice site Jeff.

    I Googled up “two character dot org domains” and you are #1. I think you would be better off changing the title of the article to “Two Character ORG Domains” and I think you would move for #6 in Google for “two character org domains” to some thing higher. You could even point a few links from other sites and see if you can drive your page to #1. I would be happy to review your site based on its quality and give you a couple of links to that article with the anchor text being “Two Character ORG Domains”.

    It would be interesting to see how far it would move up for that key phrase.

    Elevator there are some things you can do to increase the value of the domain. Develop a site on it is one and get it to rank high for key phrases that the domain could be used for. The other is to get high Google Pagerank on the homepage. This is done by getting inbound links from other websites pointed at the home page.

  11. Gabriel Celibataire on July 7th, 2009 4:25 am

    The article is quite long and a bit hard to understand for those of us without specific knowledge about the issue, can someone summarize the issue in plain English?

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