Overview
Under the Canadian Domain Name Dispute Resolution Policy, the complainant must show on the balance of probabilities that the registrant registered the domain name in bad faith. Where bad faith cannot be demonstrated as of the date of the registration, the factor is not established, even though the domain name may be used in bad faith after the registration date.
Abstract
The disputed domain name, warrenmiller.ca, was registered on behalf of the complainant (Warren Miller) by its Canadian distributor pursuant to a license agreement. Warren Miller did not meet the Canadian presence requirements at the time since it had only common law rights, but no trademark registration or Canadian corporation. After termination of the license, Warren Miller obtained a trademark registration for the mark WARREN MILLER and requested that the domain name be transferred. The registrant refused as long as outstanding financial issues between the parties remained unresolved. The panel held that Warren Miller was unable to establish the bad faith factor at the date of registration since the domain name was registered on behalf of Warren Miller pursuant to a license agreement. The fact that use of the domain name may be in bad faith at some later date was not relevant. The complaint was dismissed.
Case summary
Facts. The complainant, Warren Miller Entertainment, Inc. ("Warren Miller") is based on the persona of Warren Miller and his reputation established over the past 50 years as a ski filmmaker. Warren Miller the person is one of the most well-known names in the skiing industry, and Warren Miller the corporation is the embodiment of that fame. On July 17, 2001, Warren Miller entered into a film distribution agreement with the registrant, Willi Vogl & Associates, Ltd. ("Vogl"), to distribute in Canada the complainant's feature films, as well as home video, television and a magazine. The licence was to last through to August 1, 2007.
Warren Miller filed an application for the mark WARREN MILLER in Canada on February 1, 2006, which was registered on June 9, 2008. The domain name warrenmiller.ca was registered on January 23, 2002. The domain name was registered by Vogl in accordance with the license agreement and was effectively on behalf of Warren Miller. In June 2010, several years after the expiry of the licence, Warren Miller requested transfer of domain names, which Vogl declined, stating it would only transfer the domain names once outstanding financial issues between the parties were settled.
Analysis. For Warren Miller to succeed, it had to establish the three factors set out in paragraph 4.1 of the Canadian Domain Name Dispute Resolution Policy ("CDRP Policy"), namely that: (a) the domain name is confusingly similar to a mark in which the complainant (Warren Miller) has rights as of the date of registration of the domain name and continues to have such rights; (b) the registrant (Vogl) has registered the domain name in bad faith; and (c) the registrant (Vogl) has no legitimate interest in the domain name.
Warren Miller successfully established the first factor — that the domain name was confusingly similar to a mark in which it had rights at the date of the registration. In this regard, even though the trademark WARREN MILLER was registered after the domain name, the panel accepted that WARREN MILLER was a non-registered mark used in Canada prior to the registration date of the domain name.
The decision revolved around the second factor — that the complainant must show on the balance of probabilities that the domain name was registered in bad faith. The panel interpreted this language as indicating that the bad faith must exist at the time of registration of the domain name. Since Vogl registered the domain name as a licensee of Warren Miller, none of the three enumerated conditions for bad faith were established. It was not relevant that after the license expired, the continued use of the domain name was arguably in bad faith.
The third factor — that the registrant has no legitimate interest in the domain name — was also not established by Warren Miller. The panel indicated that it was not clear under the CDRP Policy whether the issue of no legitimate interest was to be determined at the date of the registration or could also be established at a later date. In any event, the panel found there was insufficient evidence to determine whether the continued use of the domain after the expiry of the license ceased to be legitimate. Such a determination would require a larger inquiry into the license and the factors surrounding its termination. In contrast, there was evidence of legitimate interest at the date of registration and for some time thereafter. Therefore, Warren Miller failed to meet its initial burden to establish this factor.
Conclusion
The bad faith factor in a CDRP proceeding is to be determined at the date of registration of the domain name and can not be met by establishing bad faith after registration. It will be important for trademark owners to incorporate appropriate contractual terms into any agreement whereby a third party will register a dot-ca domain name incorporating its trademark. In cases of a dispute, recovery of the domain name will likely require a court proceeding for breach of contract or trademark infringement, since it may not be possible to establish the bad faith factor in a CDRP proceeding.
Daniel M. Anthony, Ottawa
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