Under CDRP, Not Registered in Bad Faith

A recent three-member panel decision under Domain Name Dispute Resolution Policy (CDRP) of the Canadian Internet Registration Authority (CIRA) highlights differences between ownership disputes regarding .ca domain names governed by the CDRP and those regarding .com domain names governed by the Uniform Dispute Resolution Policy (UDRP) of ICANN. Microsoft Corporation had complained that the domain name was confusingly similar with marks in which Microsoft has prior rights, and that Microscience Corporation (PEI) registered the domain name in bad faith and without a legitimate interest. The CDRP is similar to the UDRP in that the four basic requirements for the transfer of a domain are: (i) the complainant has rights in a pre-existing mark (a Canadian mark in this instance), (ii) the domain name at issue is confusingly similar with the mark, (iii) the registrant has no legitimate interest in the domain name, and (iv) the existence of bad faith by the registrant. The panel rejected a number of Microsoft's arguments on the basis of a lack of evidence, and on the issue of bad faith, also on the basis of the narrower definition of bad faith under the CDRP. While the panel agreed that is confusingly similar with Microsoft's registered marks for MSN, surprisingly, the panel ruled that Microsoft did not have common law rights in MSN SEARCH in Canada as of April 26, 2002, the registration date. The panel contrasted the definition of bad faith under the CDRP, which is restricted to specifically enumerated types of conduct, with the broader definition applied under the UDRP, which is based on a knowledge or awareness on the part of the registrant that the domain name is confusingly similar with the mark in which the complainant has rights. Under the CDRP, paragraph 3.7 provides that bad faith will be found only if one of the following conditions is met: (a) the domain name was registered primarily for the purpose of selling the domain, or offering the domain for sale to either the complainant or a competitor; (b) the domain name was registered to prevent the complainant from registering its mark and the registrant has engaged in a pattern of such behaviour; or (c) the domain name was registered primarily for the purposes of disrupting the business of the complainant who is a competitor of the registrant. Microsoft did not lead evidence on bad faith under paragraph 3.7(a) and failed on its arguments under subparagraphs (b) and (c). The panel found that bad faith under paragraph 3.7(b) requires that the domain name be identical to one of complainant's marks. Since the panel also found that Microsoft did not have common law rights in the mark MSN SEARCH, Microsoft could not succeed on that issue. Under paragraph 3.7(c), Microsoft needed to establish both that the registration was primarily for the purposes of disrupting the complainant's business and that the complainant and the registrant were competitors. Because no evidence was offered to prove that the complainant and registrant were competitors, the panel concluded that it did not need to address the issue whether Microscience had any legitimate interest in the domain name. While a number of the findings may seem surprising – for example, that MSN SEARCH was not a common law mark in Canada as of the relevant date - the decision highlights important differences between Canadian and US practice in this field. For the panel decision in Re: msnsearch.ca, CDRP 00034, see: http://www.cira.ca/en/dpr-decisions/00034-msnsearch.ca.pdf Summary by: Nicholas J. Whalen