DLA Piper (Canada) LLP obtains order for transfer of disputed domain name to BCIT

On December 10, 2018, the World Intellectual Property Organization (“WIPO”) ordered that the disputed domain name <bcit.com> be transferred to the British Columbia Institute of Technology (“BCIT”). DLA Piper Canada acted as counsel to BCIT.

Established in 1964, BCIT is one of the largest post-secondary educational institutions in British Columbia, with five campuses and more than 50,000 enrolled students from over 100 countries. BCIT owns a number of registered trademarks for “BCIT”, claiming a first use in Canada since 1964.

In its finding, the WIPO concluded that BCIT successfully demonstrated that the disputed domain name is “identical or confusingly similar to a trade mark or service mark in which the Complainant has rights”, as well as showing that the “Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.” In addition, the WIPO panel found that the disputed domain name was “being used in bad faith” and that the “Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of the website.”

Chris Bennett and David Spratley represented BCIT in proceedings before WIPO.

As part of a global law firm, the DLA Piper (Canada) LLP Intellectual Property and Technology Group is amongst one of the largest groups of IP lawyers in the world, and offers international reach on a full range of intellectual property law, privacy, and technology law services for leading businesses worldwide. Our lawyers have been involved in one out of every five patent trials in Canada in the last 25 years and have been counsel on leading Canadian cases in patent, trademark and copyright litigation.