Notwithstanding the relatively small number of decisions rendered to date under the Canadian Internet Registration Authority ("CIRA") Domain Name Dispute Resolution Policy ("CDRP"), two divergent approaches have already emerged in applying a suitable test in determining whether a disputed .ca domain name is "confusingly similar" to a complainant’s mark. For a complainant to succeed in a proceeding under the CDRP, one of the three elements it must satisfy is that the disputed .ca domain name is confusingly similar to a mark in which the complainant has rights. A complainant must also prove that the registrant registered the domain name in bad faith and must provide some evidence that the registrant has no legitimate interest therein.
"Confusingly Similar" Defined
Unlike the equivalent concept under the Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by The Internet Corporation for Assigned Names and Numbers ("ICANN"), the CDRP expressly defines "confusingly similar". The CDRP states that a "… domain name is ‘Confusingly Similar’ to a Mark if the domain name so nearly resembles the Mark in appearance, sound or the ideas suggested by the Mark as to be likely to be mistaken for the Mark."
The definition is based on elements of subsection 9(1) of the Canadian Trade-marks Act (the "Act"). Subsection 9(1) enumerates certain types of marks which persons are prohibited from adopting in connection with a business, the test being that a mark may not consist of, or so nearly resemble as to be likely to be mistaken for, one of the enumerated types of marks. By way of comparison, paragraph 6(5)(e) of the Act sets out five non-exhaustive "surrounding circumstances" required to be assessed in the determination of whether trade-marks or trade-names are "confusing" for the purposes of the Act. This paragraph provides that, in assessing confusion, the court or the Registrar of Trade-marks, as the case may be, is to have regard, among other factors, to "… the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them".
CIRA expressly incorporated certain elements of Canadian trade-mark law, but not the full test of confusion as set forth in subsection 6(5) of the Act. Given the de novo nature of the CDRP, the inference is that in defining "confusingly similar", CIRA intended to steer away from a traditional trade-mark confusion analysis under Canadian trade-mark law, and instead adopt a more limited test based on "resemblance" to assess whether a .ca domain name is confusingly similar to a complainant’s mark. A limited test could be seen as consistent with the stated purpose of the CDRP which is to deal with domain name disputes relatively inexpensively and quickly.
The Diverging Decisions
In the decisions rendered under the CDRP to date, some panels have concluded that the test in assessing whether a domain name is confusingly similar with a complainant’s mark is not one of confusion, as normally found in Canadian trade-mark jurisprudence, but of resemblance.
However, other panels have interpreted the definition of confusingly similar as requiring an assessment of whether the domain name is confusing with the complainant’s mark in the traditional trade-mark sense. Notably, in "browneco.ca" the panel adopted an approach based on confusion, taking note of the corresponding provision in the UDRP which requires that a domain name be "identical or confusingly similar" to a mark in which a complainant has rights. Finding significance in the fact that the words "identical or" were not incorporated into the CDRP, the panel reasoned that the intention of the CDRP was to put a clear focus on the meaning of the term "confusingly". The panel concluded that the intention behind the definition of the term confusingly similar was not to adopt a simple test of similarity of the domain name; if it were, there would be no reason to include the word "confusingly" before the word "similar", nor would there be any logic in deleting the words "identical or" in adapting the Canadian test from the analogous provision under the UDRP. In its assessment of the issue of confusion, the panel considered factors included in a traditional trade-mark infringement analysis, including the inherent distinctiveness and secondary meaning of the complainant’s trade name as well as the similarity of that trade name with the domain name browneco.ca. The panel concluded that the domain name was confusingly similar to the complainant’s trade name.
Interestingly, in "airproducts.ca", the panel not only applied a confusion test but, in noting the relative infancy of the CDRP and acknowledging other possible interpretations of the term confusingly similar, also applied a resemblance test. Under the confusion test, the panel found that the domain name was not confusingly similar to either the complainant’s registered mark or to its trade name, Air Products Canada Ltd. However, in applying a resemblance test, the panel held that the domain name was confusingly similar to both the complainant’s registered trade-mark and its trade name. In the end, the panel adopted the result arising from applying a test of confusion and dismissed the complaint.
A Resolution? Government of Canada v. Bedford
In the CDRP dispute between the Government of Canada and David Bedford, the Government of Canada was successful in obtaining the transfer of 9 of 10 disputed .ca domain names.
Acknowledging that divergent approaches had been applied in previous disputes, the panel rejected the confusion test, and adopted the resemblance test. In doing so, the panel took note of a number of considerations: 1) the similarity of the definition of confusingly similar to subsection 9(1) of the Act; 2) the test under subsection 9(1) of the Act does not include consideration of marketplace factors which form part of a source confusion analysis; 3) the significance of the omission of the elements of subsection 6(5) of the Act other than paragraph 6(5)(e); 4) an official mark advertised under paragraph 9(1)(n) of the Act may be relied upon to prevent the use of similar marks even without the likelihood of confusion; 5) a comparison of domain names and trade-marks without considering marketplace factors is consistent with the way in which domain names are used on the Internet; and 6) the procedure under the CDRP is not suited to the kind of factual determinations involved in a conventional confusion analysis.
The panel thus concluded that, in order to succeed, the complainant must prove that a person, on a first impression, knowing of the complainant’s mark only, and having an imperfect recollection of it, would likely mistake the disputed domain name for the complainant’s mark based upon the appearance, sound or ideas suggested by the mark, consistent with the cases decided under subsection 9(1) of the Act.
In its reasoning, the panel expressly disagreed with the conclusion in "airproducts.ca" adopting confusion as the proper test and with the suggestion that a complainant’s mark must be distinctive in order to sustain a finding that a domain name is confusingly similar with a mark. The panel was of the view that, although distinctiveness of a complainant’s mark may be relevant in the determination of a whether a complainant has rights in a mark, it is not an appropriate consideration in determining whether a disputed domain name is confusingly similar to a complainant’s mark.
Disputes under the CDRP are, in effect, arbitrations rather than formal court proceedings. Thus, previously rendered decisions are not binding on subsequent disputes. Having said that, they no doubt have instructive value and should be of guidance to panels in future proceedings. It will be interesting to observe how future panels address the confusingly similar criterion and whether the test set forth in Bedford will establish itself as the preferred approach in determining whether a domain name is confusingly similar to a complainant’s mark.
Blakes is counsel to CIRA. Our retainer by CIRA expressly permits Blakes to represent parties in domain name disputes under the Policy.
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