Recent Case Notes & Commentary

COMMON LAW TRADEMARK -CONFUSINGLY SIMILAR- NO LEGITIMATE INTEREST-BAD FAITH REGISTRATION

Delta9 Bio-Tech Inc. v. DELTA NINE, a sole proprietorship

DCA-1980-CIRA

BCICA Case   30 May 2018


Complainant, in the medical marijuana business, did not have a registered trademark, so it had to prove a common law trademark.  It proved its common law trademark by evidence that it had filed for registered trademarks, that it had used DELTA 9 in the course of its lawful medical marijuana business and also by relying on a press release, magazine article and evidence of its website showing that it had used DELTA 9 as a trademark.


The common law trademarks proved were DELTA 9 BIO-TECH & DESIGN, DELTA 9 CANNABIS & DESIGN and DELTA 9 (“the DELTA 9 marks”). 


The disputed domain name <deltanine.ca> was held to be confusingly similar to the DELTA 9 marks because the whole of DELTA 9 was in the disputed domain name.


The Registrant of the domain name, (named the Registrant in Canadian proceedings, rather than the Respondent) was found to have no legitimate interest in the domain name because Complainant had been using DELTA 9 for several years, it had registered its own <delta9.ca> domain name and the Registrant had been using the disputed domain name to compete, illegally, with the Complainant and trade on its goodwill.


There was also bad faith registration because the Registrant had been disrupting the business of the Complainant and had been attempting to attract internet traffic by creating confusion with the DELTA 9 trademarks. There was also bad faith in general, in view of the illegal activities of the Registrant.


The whole decision may be read on the BCICA website at http://bcicac.com/domain-name-disputes/cira-decisions