The Canadian Internet Registration Authority (CIRA) has a mechanism for resolving domain name disputes. This domain name dispute resolution mechanism is available to all Trademark owners. A CIRA panel hearing a domain name dispute has the power to order the transfer of a domain name from an offending party to a complainant.
It is important to note that once a CIRA panel has made a ruling in a first proceeding, there is nothing in the rules of CIRA that prevents a second proceeding from being initiated relating to the same domain name issue involving the same two parties. This is exactly what happened concerning the Trademark PicMonkey. A first CIRA panel ruled against the complainant, as there was inadequate evidence on two keys issues. The first issue was a lack of evidence that the complainant had used the Trademark in Canada prior to the offending party registering their domain name. The second issue was a lack of evidence that would tend to show “bad faith” on the part of the offending party.
The complainant consulted a legal firm familiar with domain name disputes. It was determined that there was sufficient evidence on those two key issues. Prior to the domain name being registered by the offending party, the complainant’s PicMonkey site had been accessed over 41,000 times by Canadian IP addresses. There was also evidence that the offending party was a “cyber-squatter” who tied up domain names to a number of well-known third party brands. A second proceeding was launched and a second CIRA panel ruled in the complainant’s favour ordering the offending party to transfer the domain name to the complainant.
There are a number of lessons to be learned from the PicMonkey experience. The first lesson is that it is critical that a Trademark owner place before any CIRA panel the best possible evidence. A CIRA panel will only order the transfer of a domain name when the evidence is clear. The second lesson is that, if you are a complainant who has handled a first CIRA proceeding yourself and messed up, it is possible to retain competent legal counsel and launch a second proceeding with better evidence.