Canada: Recent .ca Domain Name Decision Accepts Broad Interpretation Of What Constitutes A Brand Owner’s Prior Trade-Mark "Rights" In Canada

Last Updated: April 16 2014
Article by Daniel Anthony


The recent decision of Guitar Center Inc v Robert Piperni ("Guitar Center"), CIRA Decision No. 0254,confirms that a broad definition of "rights" should apply to brand owners seeking to prove prior trade-mark rights in Canada. This definition includes a trade-mark reputation in Canada (even without trade-mark use), the advertising of services in Canada, and a non-Canadian website displaying the trade-mark to Internet users in Canada that provides a benefit to Canadians. This decision may be of assistance to many non-Canadian brand owners seeking to recover .ca domain names registered in bad faith.

Guitar Center was successfully represented by Daniel Anthony and Elliott Simcoe of Smart & Biggar.

CDRP Background

Canada's .ca domain name registry is restricted to registrants who meet the Canadian Presence Requirements, which generally requires the registrant to own a relevant Canadian trade-mark registration or be a Canadian legal entity. This can leave non-Canadian brand owners that do not own a Canadian trade-mark registration vulnerable to cybersquatting.

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:

  1. the domain name is confusingly similar to a trade-mark in which the complainant has rights;
  2. the domain name was registered in bad faith; and
  3. 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 Canada prior to registration of the domain name at issue.

Up until 2011, the CDRP contained a narrow definition of trade-mark "rights", requiring sales of wares or provision of services in Canada in association with the asserted trade-mark. This created a loophole that permitted cybersquatting of well-known non-Canadian trade-marks not yet used in Canada (see our summary of Toyota Canada v Sproul). This issue was addressed in revisions made to the CDRP in 2011, which included deleting the narrow definition of "rights" to allow for a broader interpretation of the term in CDRP jurisprudence (see our Revised CDRP announcement). Since that time, only one CDRP decision has addressed this issue, but it is restricted to rights flowing from the application filing date for a Canadian trade-mark registration (see our summary of Twenga v John Doe). The Guitar Center decision more fully addresses what activities might establish "rights" under the CDRP.

Case summary

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 trade-marks 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 Canada, and a decade before the complainant obtained its Canadian trade-mark registration. The Panellist had to determine whether the complainant had proven rights in its mark GUITAR CENTER in Canada prior to 2002.

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 trade-mark in Canada prior to registration of the disputed domain name, but also through any other basis for "rights" in a trade-mark supported by the Trade-marks 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 trade-mark "rights" under the CDRP:

  1. a website that is accessible to Canadians, displays the trade-mark and provides some benefit to Canadians (i.e. detailed product advice and information) constitutes use of the trade-mark in Canada;
  2. trade-mark advertising in Canada to promote a service accessible to Canadians constitutes use of the mark in Canada; and
  3. a mere reputation for the trade-mark in Canada can establish trade-mark rights sufficient to succeed in a passing off action or trade-mark opposition proceeding.

The Guitar Center decision signals to non-Canadian brand owners that Panellists are prepared to take a broad view of the requirement to prove trade-mark rights in Canada prior to registration of the confusing domain name.

For further information, please contact a member of our firm's Trade-marks 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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