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!
Written by admin · Filed Under Canadian Domains
