Case for Caribana Festival Domain Name — ScotiaBank Loses

Title sponsor for Carnival event in Toronto loses case to get Caribana.com domain name.

Bank of Nova Scotia, the title sponsor for Toronto’s Caribbean Carnival called “Caribana”, has lost a dispute to gain ownership of the domain name Caribana.com.

Bank of Nova Scotia — aka ScotiaBank — filed the complaint with World Intellectual Property Organization (WIPO) to get the domain name from Working Word Co-operative, which publishes Word Magazine.

Working Word told WIPO that it purchased the domain name in 1997 with the approval of the group that owned the trademark at the time. Due to financial problems with the festival, ownership of the Caribana mark has changed a number of times.

Bank of Nova Scotia entered into its sponsorship agreement with the current festival organizers in 2008, and claims that it has a licensing right to the Caribana mark.

The WIPO panel found in favor of Working Word, deciding that it registered the domain name in good faith in 1997 with the approval of the event’s organizers. The organizers frequently sent event information to Working Word for inclusion on the web site.

This case brings up an interesting point. I see trademark licenses handled in different ways when it comes to UDRP cases. Often times a panel will find that the owner of the mark, not a limited licensee, ought to bring the case. Here, if ScotiaBank had won the case, what would happen when it was no longer title sponsor of the event?