Major Festival Sponsor Loses Control Of Caribana Domain Name

Despite being the major corporate sponsor of Toronto’s annual Caribana festival (Festival), the Bank of Nova Scotia (Scotiabank) was found by the international domain name dispute resolution body to have no claim to the domain name caribana.com, a name already registered by a third party. The Festival celebrates the cultures of Caribbean immigrants and has become a major tourist attraction in Toronto. Since 1977, the Festival has operated in association with the registered trade-mark CARIBANA. In 2008, Scotiabank became the title sponsor of the Festival via an agreement with the Festival’s organizers, and obtained a license to use the trade-mark. The disputed domain name caribana.com was registered in 1997 by Working Word Co-operative Ltd (Working Word), a company unaffiliated with the Festival. Scotiabank filed a complaint with the World Intellectual Property Organization’s Arbitration and Mediation Centre and claimed that caribana.com was confusingly similar to the CARIBANA trade-mark, and that Working Word’s use of the domain name created a likelihood of confusion as to source, sponsorship, affiliation or endorsement of its web site. Scotiabank further accused Working Word of cyber-squatting, that is, registering and using the domain name in bad faith so as to obtain unfair commercial gain by diverting consumers, and thus diminishing the exclusivity for which Scotiabank had paid a significant sum. The appointed sole adjudicator agreed with Scotiabank’s assertion that caribana.com was confusingly similar to the CARIBANA trade-mark. However, on the basis of the evidence presented by both parties, the adjudicator held that Scotiabank failed to prove that Working Word registered the domain name in bad faith. In particular, Working Word tendered evidence to show that it had registered and used caribana.com with the full knowledge and approval of the Festival’s organizers for more than a decade and the organizers were therefore well aware of Working Word’s registration and use of the disputed domain name. Scotiabank and the festival’s organizers have since launched their own competing web site, caribanafestival.com. For a link to the WIPO domain name decision, visit: http://tinyurl.com/28tvmrp For a news article on the topic, see: http://tinyurl.com/2evrnt2 Summary by: Janet Chong