Legal News: Pay- Per-Click Issues In Canada

[companyone]

Pay-Per-Click Issues in Canada

By Sheri Archidiacono, Esq, L.L.M., Legal Counsel

Over the past few months, the Canadian Internet Registration Authority (CIRA) has been dealing with legal issues surrounding pay-per-click and the Canadian Domain Name Dispute Resolution Policy (CDPR). In Canadian Broadcasting Corporation/Societe Radio-Canada vs. Dhalla, a CIRA Panel answered the question of whether the use of a domain name in association with a pay-per-click service is a legitimate interest under the CDPR. The Canadian Broadcasting Corportation (CBC) had been using the registered trademark HOCKEY NIGHT IN CANADA in association with broadcasting hockey games and related merchandise and promotional materials.

The domain owner, Dhalla, registered the domain, "hockeynightincanada.ca" in November of 2000 and displayed an "under construction" page but later the domain resolved to a parking page. Dhalla contacted Canadian Broadcasting with the purpose of initiating a domain transfer, stating that he was not going to move forward with his original plans for the domain, which was to develop a site for end users to gamble and bet on hockey games. The parties attempted to negotiate a price, but they were unable to reach an agreement. CBC instituted a claim under the CDRP in December of 2006. Under the CDRP, a complainant must prove the following: "(a) the domain name at issue is similar to a trademark in which it has rights which predate the registration date of the domain name, (b) the domain name was registered in bad faith, and (c) the registrant does not have a legitimate interest in the domain."

The Panel found that CBC had prior rights in the HOCKEY NIGHT IN CANADA trademark. It also held that Dhalla did not have a legitimate interest in the domain "hockeynightincanada.ca" other than to generate revenue by monetizing the domain, which is not a legitimate purpose under the CDRP. The Panel put a major focus on the second prong of establishing "bad faith". Under the CDRP, bad faith will be found only if one of three factors can be determined.

First, the registrant must have registered the domain primarily to resell or transfer the domain to the complainant for a cost in excess of the registration fees. Secondly, the registrant must have registered the domain to prevent the complainant from registering the domain, and has displayed a pattern of such behavior with other trademark domains and trademark owners. Lastly, the registrant must have registered the domain with the purpose of interfering with the business of the complainant or its competitor. The Panel found clear evidence that Dhalla had registered the domain bad faith in that there was no doubt that he would be disrupting CBC's business activities. Therefore, the Panel held that Dhalla indeed registered the domain in bad faith.

_______

[amcdonald]

ppc aside, its a clear tm violation

[whitebark]

yeah, everyone in Canada young and old knows who does hockey night in Canada. How long has it been on the air - 60 years?

There are a number of domains related to the CBC available in .ca - I wouldn't touch them.