Usage of trademark/tradename prior to the registration of the domain name is necessary to establish rights.
The case was before the British Columbia International Commercial Arbitration Centre (BCICAC). The complainant Trucksuite LLC is a business settled both in USA and Canada and deals in a variety of transportation services. Complainant filed a trademark application in Canada for the word TRUCKSUITE however got to know that the domain name is already registered by the registrant after which he filed a complaint against the registrant alleging that he has rights in the mark and also that the same act of the registrant violates many provisions of the Dispute Resolution Policy, hereinafter referred to as the “Policy”.
The general principle of burden of proof lies on the balance of probabilities and on the first instance, is upon the complainant to prove that the domain name is similar to that of the complainant’s trademark which might cause confusion and that the same is registered by the registrant in bad faith. After which, the burden of proof shifted on the registrant to prove that he in fact had legitimate interest in the same domain name.
Firstly, after a close reading of Paragraph 4.1(a) of the Policy, BCICAC iterated that the domain name was in fact similar to the TRUCKSUITE mark, however, also recognized that the issue was about whether the complainant has rights in the mark. The complainant argued that it has acquired common law trademark rights in Canada by virtue of its operation in USA since 2016 while the registrant argued that prior to the registration of the domain name, the complainant had no business or goodwill in Canada which disentitled him from receiving any rights in the mark. For deciding this issue, BCICAC referred to Paragraph 3.2(a) of the Policy which explicitly mandates that in order to have rights in the mark, one must show that the trademark or trade name was being used in Canada prior to the registration of the domain name.
In the instant case, the domain name was registered by Mr. Donofrio in April 2019 and the complainant started its business in Canada in spring 2019. Complainant’s failure to provide evidence of its business operation in Canada before April 2019 and failure to meet the requirements specified in Paragraph 4.1(a) of the Policy led to BCICAC concluding that the complainant had no rights in the mark.
Secondly, Paragraphs 4.1(b) and 4.1(c) of the Policy required the complainant to prove that the registrant had acquired the domain name in bad faith and that there must be sufficient evidence for establishing that the registrant does not have any legitimate interest. Complainant was unable to support his stance for proving that the registrant was using the domain name for any commercial gain or with the ulterior motive of disrupting the complainant’s business. It is to be noted that since BCICAC has no jurisdiction or power to decide upon the merits of the dispute, the determination before it was only limited to the eligibility and rights in the trademark. Finally, the complaint was dismissed bearing no costs on the complainant as registrant failed to prove that the complainant’s allegations were unfair and without colour of right.