CIRA Allows Complaint Over ecars.ca

In a dispute over the domain names “ecars.ca” and “ecar.ca”, the Canadian Internet Registration Authority (CIRA) transferred ownership of the domain names from the registrant, an Ontario-based website designer and developer, to Enterprise Rent-A-Car (“ Enterprise”), a large US-based car-rental company. In making its decision, CIRA accepted that Enterprise had registered the marks “ECARS” and “ECAR” with the Canadian Intellectual Property Office in 1995 and 2001, respectively. The registrant was found to have registered the domain names “ecars.ca” and “ecar.ca” on February 1, 2001 and January 24, 2002, respectively.

Pursuant to CIRA’s Domain Name Dispute Resolution Policy, Enterprise succeeded in its dispute against the registrant by proving, on a balance of probabilities, that: (a) “ecars.ca” and “ecar.ca” were both confusingly similar to the trade-marks in which Enterprise had rights prior to the domain name registration dates, and to which such rights still exist; (b) the domain names were registered in bad faith, since the associated web pages linked to the websites of Enterprise’s competitors, indicating the registrant intended to disrupt Enterprise’s business; and (c) there was evidence the registrant had no legitimate interest in the domain names. The registrant had submitted that the use of the pre-fix “e” was a “universal prefix of the Internet age” and using it in each of the domain names made the resulting words clearly descriptive or generic in nature, which was grounds for claiming a legitimate interest. CIRA, however, rejected the registrant’s argument since it did not consider the prefix to be descriptive in itself, and therefore such a prefix could not make words clearly descriptive or generic by association.

This entry first appeared in the February 7, 2008 edition of lawsof.com. For a copy of the CIRA decision, click here.