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04|24|2009 09:34 pm EDT

Globe Media Found Guilty By CIRA Panel For Reverse Domain Name Hijacking (.CA)

by Chad Kettner in Categories: ccTLDs

Globe Media International Corp, a Canadian business whose contact person is Mr. Stefano Venneri, has been found guilty of Reverse Domain Name Hijacking by a Canadian Internet Registration Authority (CIRA) panel – a very serious offense that includes a potential penalty of $5000 – for trying to take the domain name ForSale.ca away from its rightful owner, Bonfire Development, a domain name acquisition company from Calgary, Alberta. It is the first time anybody has been found guilty of this offense by the CIRA.

The domain name ForSale.ca was originally registered under the University of British Columbia registry on October 20, 2000. However on January 21, 2005, Globe Media’s trademark application for “WWW.FOR-SALE.CA” matured to registration, leading to a dispute in 2006 where Globe Media attempted to take the domain name from its then holder, Mr. Sohail Kahn of Dawn Internet Telephony. In that case, Globe Media did not establish trade-mark rights that preceded the original registration date in 2000, so the case was dismissed [click here for official ruling].

However, fast-forwarding to the present case, the domain name ForSale.ca lapsed on January 3, 2009, and became available for re-registration. The name was immediately registered on that same day by Tom Brown, an individual who happened to work for the domain name registrar BareMetal.com (but acted as an individual). Brown was soon sent an offer by Globe Media, which he ignored, and later sold the domain name to Bonfire Development for $29,900 on January 12, 2009.

Globe Media responded by sending an email to Bonfire Development citing its “WWW.FOR-SALE.CA” trademark and offering to purchase the domain name for $5000 and asserting it would move to protect its rights failing a favorable response. On February 11, 2009, Globe Media filed with the CIRA for a Domain Name Resolution.

In this case, Globe Media was once again unable to prove it owned the rights to ForSale.ca. Although the domain name is confusingly similar to Globe Media’s trademark, the company was unable to prove that Bonfire Developments registered the domain name in bad faith and that it had no legitimate interest in the domain name.

Bonfire Developments responded by asking the panel to make a finding of Reverse Domain Name Hijacking under paragraph 4.6 of the Policy [click here for a .pdf copy of the policy]:

“If the Registrant is successful, and the Registrant proves, on the balance of probabilities, that the Complaint was commenced by the Complainant for the purpose of attempting, unfairly and without colour of right, to cancel, or obtain a transfer of any Registration which is the subject of the Proceeding, then the Panel may order the Complainant to pay the Provider in trust for the Registrant an amount of up to five thousand dollars ($5000) to defray the costs incurred by the Registrant in preparing for, and filing material in the Proceeding. The Complainant will be ineligible to file another Complaint in respect or any Registration for any Provider until the amount owing is paid in full to the Provider”

Bonfire Development claimed that Globe Media was knowingly trying to obtain ForSale.ca in bad faith – and that even the registration of the “WWW.FOR-SALE.CA” trademark was made in and of itself as a part of Globe Media’s strategy to wrest legitimately registered domain names from legitimate holders through questionable trademark and domain name registrations.

Typically, a confusingly similar trademark would be enough to defend oneself against a complaint of Reverse Domain Name Hijacking – but in this case there was merit to the claim.

On March 2, 2009, Dan Cera posted an article on his DomainCop.com blog questioning Globe Media’s dangerous domain strategy. Led by president Stefano Venneri of Toronto, Globe Media registered numerous trademark infringing domains including Ducati.ca, Labatts.ca, Mentos.ca, Zantac.ca, Chaps.ca, Isuzu.ca, KMart.ca, Longines.ca, Smirnoff.ca, Versace.ca, Lotto649.ca, Fendi.ca, and Movado.ca.

This information, which was also discovered by the CIRA Panel, represented a very serious concern showing that Globe Media was abusing the trade-mark regime and its intended purpose. According to the official ruling:

“The mere fact of having a registered trade-mark in this case is insufficient to establish a colour of right on the part of [Globe Media] given its egregious conduct. For lack of a better term, [Globe Media] appears to have engaged in filching.

The Complaint thus does constitute a serious attempt at Reverse Domain Name Hijacking.”

Bonfire Development was represented in this case by Mr. Zak Moscovitch of the Moscovitch Law Firm.

[Click here for Official Documentation of the CIRA Ruling]

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7 Comments

Adam

April 25, 2009 @ 12:04 am EDT

dont see many of these . nice find boys!

Frank Michlick

April 25, 2009 @ 3:26 am EDT

Especially in .CA this is a first.

Richard

April 25, 2009 @ 11:37 am EDT

Great job, Mr. Muscovitch.

[…] to DomainNameNews today, a company has been found guilty of a Reverse Domain Name Hijack attempt, which carries a […]

John Berryhill

April 29, 2009 @ 1:18 pm EDT

It is the first ever .ca RDNH ruling. Zak Muscovitch has done a lot of groundbreaking work in domain/trademark conflicts, and this is yet another landmark success.

Domain Development

April 29, 2009 @ 1:52 pm EDT

Agree with John. Zak is a sharp lawyer and a great person. If you need a domaining lawyer in Canada, you should contact Zak!

– Richard

Frank Michlick

April 29, 2009 @ 2:51 pm EDT

@John: Have there been fines in gTLD RDNH rulings before?

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