Canadian complainant and Indian respondent over CGI

C

Some terms are generic in nature. Generic means that they are common and used in many different ways by different entities. Trademarks in such terms are difficult to register as well as to administer. Such marks can be used by other parties, without the consent of the holder on the  basis of commonality.

CGI, Inc.  is a Canadian firm that specializes in providing IT and business consulting services through the use of CGI. It operates on the domain name CGI.com. The company claims first usage in 2001 and acquired Indian trademarks over the terms in 2013.

The company found that the domain name CGI.in has been registered and was used. The company thus filed a UDRP against the domain name.

The domain name CGI.in  was registered in February 2005. The complainant claims that the domain name wasn’t used to offer any bonafide services but was once used to redirect to atools.me which is a UAE based firm. The complainant presents atools.me as its competitor. Thus, the redirection by the respondent was a display of the use of domain name in bad faith.

The respondent cleared that the redirection was a one time mistake and presented evidence to support that it was indeed caused by a technical glitch. Having been satisfied with the respondent’s reason for redirection, the panel found that the respondent had registered other similar domain names too like animation.in. The respondent claims that the term CGI is generic in nature with a possible meaning being Computer Generated Imagery.

The panel found the explanation provided by the respondent of registering the domain name because of different meaning is plausible. The panel also found that the complainant didn’t had any trademarks over the term at the time of domain registration. Even if the complainant claims a prior first use, this won’t be applicable here. For, complainant to hold common law rights, it needs to establish notoriety over the mark at the time. However, the complainant fails to assist this notoriety with any evidence.

Hence, the panel denied the complaint.


You can read the full case here.

By The Wizard

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