- #485 - Canadian Federation of Students-Services v. Nameshield Inc. (Domain Transferred - One Panelist - PDF)
The design trademark asserted in the complaint
CIPO Registration number TMA414189 is owned by ISIC ASSOCIATION in Denmark. The Canadian Federation of Students-Services doesn't own any trademarks resembling the word ISIC.
So how does a licensee have rights in a trademark? Certainly the Canadian Federation of Students-Services' rights to use the ISIC marks are revocable by the trademark owner, so it doesn't appear that it was the party entitled to bring the complaint.
See sections 8 and 9 of the CDRP rules state:
8. specify the Marks on which the Complaint is based and, for each Mark, describe the goods, services, business or non-commercial activity, if any, with which the Mark has been or is used by the Complainant, or a predecessor in title, or a licensor or a licensee thereof;
9. in accordance with the Policy, but without exceeding five thousand (5000) words for the first domain and up to a thousand (1000) additional words for each additional domain in dispute, plus any Schedules, describe the particulars of the basis for the Complaint, including in particular:
- why the Registrant’s dot-ca domain name should be considered as Confusingly Similar to a Mark in which the Complainant had Rights prior to the date of registration of the domain name and continues to have such Rights;
- why the Registrant should be considered as having no legitimate interest in the domain name as described in paragraph 3.4 of the Policy; and
- why the Registrant should be considered as having registered the domain name in bad faith as described in paragraph 3.5 of the Policy.
The description should discuss any aspects of paragraphs 3.4 and 3.5 of the Policy that may be applicable to the Proceeding;
CIRA Domain Name Dispute Resolution Rules
4L Domain names are inherently valuable and their registration is fair under the UDRP Consensus 3.0. CDRP panelists should adopt the same viewpoint.
Was it fair to register a 4L acronym in 2014 when there were a few different non-trademark owners who used the acronym in their names and when there was no evidence targeting asserted?
1 ISIC QC-1168678184 2012-11-12 Active
2 ISIC ON-191082536 2009-10-26 Inactive
3 ISIC QC-1164806342 2007-11-09 Inactive
4 ISIC CANADA ON-310600713 2021-04-12 Active
5 ISIC TECHNOLOGIES INC. SK-0000587168 1988-05-13 Inactive
6 ISIC & DESIGN TM-0504331 1983-06-10 Inactive 16
7 ISIC DESIGN TM-1903119 2018-06-07 Active 9 , 35 , 39 , 41 , 42 , 43
8 ISIC & Design TM-1399325 2008-06-12 Active 16 , 35 , 41
9 ISIC & DESIGN TM-0688594 1991-08-28 Active 16
10 LI'L ISIC BATH SHOP LTD. AB-200880623 1976-03-05 Inactive
11 I.S.I.C. TM-0504329 1983-05-05 Inactive 16
In the
Dagi Giyim San. Ve tic.a. ş. v. PrivacyDotLink Customer 4594967 / Domain Admin, WIPO Case No. D2022-2730
re: dagi.com, it was held:
The Complainant completely ignored the fact that four-letter Domain Names may be intrinsically valuable globally and hence the disputed Domain Name could have been registered by a person unconnected with Türkiye. There are in fact persons and businesses outside Türkiye that use the term “dagi” as their name or part of their name or as an acronym, completely independently of any connection with Türkiye.
The Respondent convincingly demonstrates that it acquired the disputed Domain Name on December 20, 2012 as part of a portfolio of other four letter domain names.
Co-Panelists: Private Research Undertaken by the Presiding Panelist Contaminated the Case ICA UDRP Digest - Vol 2.42 - InternetCommerce.org