Unfavourable CDRP Decision Not Determinative of Future Attempts to Obtain Transfers of Canadian Domain Names

Two recent decisions under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy (CDRP) demonstrated that a claimant is not prevented from obtaining the transfer of a Canadian domain name by virtue of receiving an initial unfavourable decision in respect of the domain name.

In PicMonkey LLC and PicM (Cayman) LP v Whois Privacy Services Inc, PicMonkey LLC was unsuccessful in obtaining a transfer of the <www.picmonkey.ca> domain name (the Domain Name), as the CDRP panel held that PicMonkey (the Complainant) failed to establish that it had trademark rights in Canada in the trademark, PICMONKEY, prior to the registration of the Domain Name by Whois Privacy Services Inc (the Registrant).  Thus, even though the Registrant did not respond to the complaint, the Complainant failed to establish that the Domain Name was confusingly similar to a trademark in which the Complainant had rights in Canada prior to the registration of the Domain Name, as required by paragraph 4.1 of the CDRP.

Undeterred, PicMonkey submitted another claim under the CDRP (PicMonkey International Limited and PicMonkey LLC v Whois Privacy Services Inc), this time including additional evidence (1) relating to its use of PICMONKEY in Canada prior to the registration of the Domain Name, and (2) seeking to demonstrate the Registrant’s bad faith in registering the Domain Name.  At this second attempt to obtain the transfer of the Domain Name, the single member panel found that PicMonkey established that:

1. the Domain Name was confusingly similar to the PICMONKEY trademark, for which the Complainant had rights in prior to the registration of the Domain Name;
2. the Registrant registered the Domain Name in bad faith; and
3. the Complainant provided some evidence that the Registrant had no legitimate interest in the Domain Name.

The panel thus ordered the Domain Name to be transferred to PicMonkey.

Summary By: Michael House