201808.31

Cybersquatting: Back to Basics

Can a company (company A) register a domain name (say companyb.com) that is identical to the trademark of its main competitor (company B), and redirects it to its own website (companya.com)? Surprisingly, it appears that the issue still deserves to be raised.
Two Canadian publishers fought in a dispute resolution process concerning a .CA domain name. Altomedia, the owner of a “Le Métropolitain” trademark and the domain name lemetropolitain.com, publishes newspapers aimed at the French-speaking readership of the Toronto region, including Le Métropolitain, aptly named “Le Journal des Plaignants” (The Complainants’ Journal). L’Express de Toronto, the publisher of the newspaper L’Express, is Altomedia’s main competitor. The financing of these two companies is mainly based on online advertising banners.
L’Express de Toronto has registered the domain name lemetropolitain.ca to redirect it to its website. The owner of the Journal des Plaignants has initiated an out-of-court proceeding, conducted under the auspices of Resolution Canada (one of the two institutions designated by the CIRA Registry), for the transfer of the domain name lemetropolitain.ca. The redirection was removed during the procedure.
Given the circumstances, the question of bad faith must have arisen singularly. Article 3.5 of the caDRP Principles, entitled “bad faith registration”, has four sub-sections, including the following:
“(…) any of the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence that a Registrant has registered a domain name in bad faith:
(…)
(c) the Registrant registered the domain name or acquired the Registration primarily for the purpose of disrupting the business of the Complainant, or the Complainant’s licensor or licensee of the Mark, who is a competitor of the Registrant; or
(d) the Registrant has intentionally attempted to attract, for commercial gain, Internet users to the Registrant’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.”
It is on these grounds that the panelist found that Altomedia acted in bad faith in a competitive niche context. Logically, her decision ordered the transfer of the domain name (Resolution Canada, PRD-00365, Altomedia, Inc. v. Toronto Express Inc., March 23, 2018, lemetropolitain.ca, transfer).

About IP Twins

IP Twins collects evidence of cybersquatting acts. Our team can advise you on all matters relating to domain names. We can also represent you in out-of-court procedures (such as caDRP, UDRP, etc.).