Battle at the Candystand

Battles for internet real estate are often fought in the domain name arena.  This is a hybrid world full of acronyms (UDRP, CDRP, CIRA, ICANN…) which was created just for the resolution of domain name ownership disputes. Who is entitled to own a domain name and what mechanism is used to resolve such a dispute? To answer this question, the domain name dispute resolution system was created.  In Canada, disputes over .CA domain names are governed by the CIRA Domain Name Dispute Resolution Policy, which is commonly referred to as the CDRP. 

In October 2006, the CDRP decision in Wrigley Canada Inc. v. Brain Wave Holdings Inc. was released. Remember, this is not a court decision.  This is an arbitration process unique to domain names which operates outside the Canadian court system.  This dispute involved the domain name  Specifically, Wrigley, the candy king, alleged that the domain name was registered by Brain Wave Holdings in “bad faith” and should be transferred to Wrigley.

Brain Wave Holdings, a Kelowna, B.C. company, registered the domain name in July 2002.  The registrant used the site as a kind of portal to other candy-related sites or links. 

Wrigley alleged that the registrant registered the domain name in “bad faith” to prevent Wrigley from obtaining the domain name, and that the registrant lacked legitimate interests in the domain name.  Wrigley pointed to its own site at and its US registered trade-mark CANDYSTAND.  Wrigley did not have a Canadian trade-mark registration and so had to rely on its unregistered or common-law rights to the mark CANDYSTAND in Canada for the purposes of this dispute. 

Brain Wave Holdings countered, saying that the word CANDYSTAND is descriptive or generic and that no-one should be entitled to a monopoly on such a descriptive term. This seems like a good argument to me, and given the use of the domain name by the registrant as a portal to candy-related sites, it might appear that the registrant was making a legitimate use of the domain name.  It would be like using the domain name as a portal to bread-related products. Who could claim rights to such a generic term?

Wrigley could. And did, successfully in this case.  By submitting evidence of the strength of their mark and the popularity of their site (4 million visitors a month) they showed that it was unlikely that the registrant was unaware of Wrigley’s rights at the time the name was registered.  They clinched the case when they showed that this registrant had a prior history as a cybersquatter.  Instead of an innocent mom-and-pop candy-store operator in Kelowna, they painted the registrant as a notorious cybersquatter who must be up to no good.  These factors convinced the arbitration panel that the domain name should be transferred to Wrigley. 

1 comment

1 Comment so far

  1. […] In 2003, Cheap Tickets and Travel Inc. launched an unsuccessful CDRP challenge to Emall’s registration of the domain name.  Emall’s lawyers defended, claiming that the trade-mark was generic and that the complaint constituted an attempt to hijack the domain name.  In the arbitration decision, the panel agreed with Emall and dismissed the complaint since the domain name was registered before the Complainant had any rights to the CHEAP TICKETS trade-mark.  […]

Leave a reply

You must be logged in to post a comment.