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Scotiabank fails in bid to snag Caribana domain name

Revellers dance on Lakeshore Boulevard during the 2008 Caribana Parade. The Bank of Nova Scotia has failed in its bid to gain control of, a potentially lucrative website name.

Aaron Harris/Aaron Harris / The Canadian Press

When Bank of Nova Scotia became the latest major corporate sponsor of Toronto's Caribana festival - a cultural juggernaut with an estimated $300-million annual impact - the bank believed it was entitled to a little more than its name atop the festival's banners.

It also wanted the domain name. The problem is, somebody else already owned it.

Scotiabank's unsuccessful attempt to gain control of the potentially lucrative website name became the basis for a case before the global tribunal that resolves such domain name disputes - a case that lawyers say could have set a wide-ranging and controversial precedent.

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"This case was startling," said veteran domain-name lawyer Zak Muscovitch. "I haven't seen a case this bad in 10 years."

The case raised an important question in the world of domain-name law: Does a company that pays for a temporary sponsorship of an event then have a claim to website names that can be considered confusingly similar to that event's name?

According to registration records, is registered to Donna McCurvin, a prominent member of Toronto's cultural community and a past winner of the Black Business and Professional Association's Harry Jerome Award. The domain name was registered in 1997.

Ms. McCurvin did not respond to a request for comment.

However the company with which Ms. McCurvin is associated, Working Word Co-operative Ltd. - the company Scotiabank took before a World Intellectual Property Organization panel to try to take the domain name away - is a separate entity from the committee that runs the Caribana festival.

In 2008, Scotiabank became the latest of Canada's big banks to sponsor the festival, signing a deal that gives it title sponsor status until 2012.

In its WIPO filing, Scotiabank argued that the domain name is "confusingly similar" to the Caribana festival - a common argument used by many firms ranging from Google to eBay - to successfully argue for the transfer of domain names registered to imposters.

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Ultimately, a one-person WIPO panel ruled against Scotiabank, saying that even though the domain name was confusingly similar to the Caribana festival trademark, the bank could not prove it was registered in bad faith, in large part because's owners have published information about the festival since long before Scotiabank became the title sponsor.

But the ruling made no mention of whether Scotiabank, as a title sponsor, had a right to go after the domain name in the first place.

"Nowhere in the evidence does it say that they had licence agreement that allowed them to take ownership of the underlying domain name," Mr. Muscovitch said. "Of course that's the way it has to be, because it's just a [temporary]licence.

"Would TD Bank, if they became the next sponsor, have to go after Scotia [for the domain name]"

Scotiabank counters that it was simply acting on behalf of Caribana festival management, and had it won the case, would have handed control of over to the organizing committee.

"We wouldn't have kept it," said Scotiabank spokeswoman Ann DeRabbie. "As a financial institution we're not interested in holding on to that domain name."

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Having failed to get its hands on, the bank and the festival's management have launched their own competing website:

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