UDRP CASE SUMMARY ARCHIVES - DOMAIN NAME LEGAL DISPUTES

Federal Court: "Cheap Tickets" for everyone, no more monopoly.

TORONTO March 9, 2007 - The Federal Court of Canada has ruled that everyone has the right to sell "Cheap Tickets". In ruling that two registered trademarks, "Cheap Tickets" and "Cheap Tickets and Travel", should be struck from the trademarks registry, The Honourable Justice Barry Strayer decided that no one should have the monopoly over describing their tickets as "cheap".

Montreal-based Internet developer, Emall.ca Inc., had taken Victoria-based travel agency, Cheap Tickets and Travel Inc. to Federal Court to strike its registered trademarks. The lawsuit was in response to the travel agency's previous attempts to force Emall.ca Inc. to turn over its domain name, CheapTickets.ca. The travel agency had unsuccessfully complained to the Canadian Internet Registration Authority, and then sued Emall.ca Inc. for trademark infringement in British Columbia.

Peter Maxymych, the President of Emall.ca Inc. said, "This is a victory for every business person in Canada. Everyone should have the right to accurately describe what they are offering. I am thankful that the Judge agreed and ordered that the travel agency's trademarks be struck from the registry so that it does not enjoy an unfair monopoly."

In his written decision released this week, Justice Strayer said that the travel agency admitted that it used "Cheap Tickets" and "Cheap Tickets and Travel" descriptively of the services that it provided, and that, "In effect these combinations are withdrawn from use in the commercial world in Canada by anyone other than the Respondent. I do not believe this should be permitted because I am satisfied that these trademark are clearly descriptive."

Harold Simpkins, Vice-President of Marketing at Emall.ca Inc., and a Professor of Marketing at Concordia University, said "Of course everyone has the right to describe the good or services that they are selling. It would turn the commercial world on its head if only one company could describe their tickets as "cheap". In fact, all you have to do is look on Google to see that Air Canada, Sears, and Expedia all offer "cheap tickets" in Internet advertising, so there is no reason why just one company should have the exclusive right to do so".

Internet lawyer, Zak Muscovitch, who successfully represented Emall.ca Inc., said "This dispute started off with the travel agency claiming that they had a right to my client's domain name, CheapTickets.ca, because they had registered trademarks. The dispute has ended with my client rightfully keeping its domain name, and the travel agency losing its registered trademarks. They should never have been issued them in the first place. This is a lesson for overreaching trademark owners. We are ecstatic about the decision. Justice was definitely served."

Descriptive domain names have become extraordinarily valuable with the explosive growth of the pay-per-click internet advertising revenue model. Accordingly, registrants of good descriptive domain names tend to fiercely resist challenges to their registration. Emall.ca Inc. is a pioneer in the registration of .ca domain names, and recently sold nearly four hundred of its generic .ca domain names to the Yellow Pages Group for 2.5 million dollars. Said Mr. Maxymych, "We have collected the best .ca domain name portfolio in the country and we see a very bright future for .ca domain names as Internet advertising continues to grow so dramatically."

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