Twenga Trademark Troubles

Twenga, Societe Anomyme (“TSA”) owns the registration for the mark TWENGA in Canada, which was applied for in May 12, 2008 and registered on October 25, 2011. Prior to the issuance of TSA’s registration, on October 5, 2010, the Registrant registered the Domain Name. The Registrant’s contact information was protected by the privacy rules of the Canadian Internet Registration Authority (“CIRA”). In August, 2011, TSA attempted to contact the Registrant through various means including a direct request to CIRA for the release of the Registrant’s information, which was refused. After receiving no response from the Registrant, TSA filed its Complaint in November, 2011.

Pursuant to section 3.1 of the CIRA Domain Name Dispute Resolution Policy (the “Policy”) TSA was required to show that:

(a) the Domain Name was confusingly similar to TSA’s mark in which TSA had established prior rights to the registration of the Domain Name,

(b) the Registrant registered the Domain Name in bad faith, and

(c) the Registrant had no legitimate interest in the Domain Name.

The single arbitrator panel reviewing the Complaint held that TSA met all of the above requirements and, therefore, transferred the Domain Name to the Complainant.

Prior Rights – Registration of the Trade-mark After the Registration of the Domain Name

Decisions of CIRA’s dispute resolution process (“CDRP”) have commonly held that if a domain name registration at issue predates a complainant’s trade-mark registration, the complainant must demonstrate that it has used its trade-mark in Canada (i.e., established some common law rights to the mark in Canada) prior to the registration the domain name at issue to successfully meet the test in section 3.1(a) of the Policy (see Cheap Tickets and Travel Inc. v. Emall.ca Inc. CIRA decision no. 4 (January 31, 2003)).

Instead, the arbitrator here found that “once a trade-mark is registered, its owner has rights in the mark from the date of the [trade-mark] application”, regardless of when the trade-mark registration issued and whether there had been prior use of the mark in Canada vis à vis the domain name.

The arbitrator’s rationale for this finding was based mainly on:

• the amendments to the Policy on August 22, 2011 removing the exhaustive definitions of trade-mark “rights” and “use”, notwithstanding the fact that several CDRP cases released after August, 2011 appear to consistently apply the principle from Cheap Tickets (see The Exite Group, Inc. v. Zucker International Marketing Inc. CIRA decision 00176 (December 7, 2011)); and

• the wording of section 14 of the Trade-marks Act, even though TSA never claimed reliance on section 14 in obtaining its registration.

Therefore, TSA was found to have prior rights to the TWENGA mark because of its earlier trade-mark application filing date and the following facts had no impact:

• TSA’s trade-mark registration had issued after the domain name registration;

• TSA’s trade-mark registration was based only on French registration and use of the mark in France with no reference to Canadian use;

• TSA provided no evidence of use of its mark TWENGA in Canada; and

• TSA enjoyed the benefits of section 14 of the Trade-marks Act even though it never relied on in its trade-mark application.

Prior Rights – Trade-mark Registration Required

The arbitrator held that to establish prior rights in a mark, a complainant is required to have a trade-mark registration in Canada prior to the filing of a complaint. Evidence of use of a mark in Canada by the Complainant prior to the date of the domain name registration was held to simply supplement the Complainant’s case to demonstrate prior rights in the mark.

Nowhere in the Policy is it specified that a registered trade-mark in Canada is required to demonstrate prior rights. While it is one of the bases through which to do so, section 3.1(a) of the Policy simply references the term “mark” and section 3.2(a) of the Policy specifically identifies common law unregistered marks and trade-names used in Canada as “marks”.

Practice Point

It is unclear why TSA’s request for disclosure was refused. CIRA has a specific mechanism (see Request for Disclosure of Registrant Information form) which allows a third party to access certain registrant contact information where, inter alia, there is a “dispute” between parties. Based on the facts provided in this case, TSA certainly had a “dispute” with the Registrant and should have qualified to gain access to the Registrant’s contact information through this mechanism.

Conclusion

This complainant-centric decision is particularly useful for foreign entities that have registered marks in Canada but have not had the opportunity to use in Canada. It remains to be seen whether this case will be appealed and, if left alone, how it will be treated in future CDRP decisions.

Sanjukta Tole is an Osgoode Alumn (’07), and an Associate at Sim & McBurney practicing in the areas of trade-mark, copyright and patent law. Specifically, Sanjukta advises clients on a variety of matters relating to trade-mark prosecution and litigation, copyright infringement, domain name disputes, and patent litigation.