Political Slogans and Domain Name Abuse: Can a Political Slogan Function as a Trademark for Purposes of Standing in UDRP Proceedings?
Jackpine Dynamic Branding Inc. v. Asadallah Kassam
by Ivan Lipshitz, Adv., JMB Davis Ben-David
Asserted Trademarks: CANADA IS NOT FOR SALE” and its French equivalent “LE CANADA N’EST PAS À VENDRE”
Domain Names at Issue: <CANADAISNOTFORSALEHAT.CA>and <CANADANOTFORSALEHATS.CA> (the “disputed domain name”)
Presiding Panelist: Nathalie Dreyfus; Panelists: Neil Brown, Brian Gray
COMPLAINT DENIED
This case is a decision from the Canadian International Internet Dispute Resolution Centre (CIIDRC) under the Canadian Dispute Resolution Policy (“CDRP” or “the Policy “) regarding a domain name dispute between Jackpine Dynamic Branding Inc as Complainant over the two domain names <CANADAISNOTFORSALEHAT.CA> and <CANADANOTFORSALEHATS.CA> registered by Asadallah Kassam, as registrant.
The CDRP is the equivalent of the Uniform Domain-Name Dispute Resolution Policy ( the “UDRP”) for .ca ccTLD`s with minor variations.
Relevant Facts: The Complainant is a Canadian corporation incorporated on June 20, 2017, and meets the Canadian Presence Requirements of the Canadian Internet Registration Authority (CIRA) in respect of the disputed domain names. The Complainant claimed rights in the common law trademark “CANADA IS NOT FOR SALE” and its French equivalent “LE CANADA N’EST PAS À VENDRE” (together, the “Marks”) in association with hats, apparel, stickers, and signage (the “Goods”) which it created in response to President Trump’s statements to the effect that Canada should become the 51st state of the United States. The Complainant registered the domain name <strongandfreehat.ca> on January 9, 2025, and created a Shopify® store to sell its Goods displaying its trademarks. The Complainant started advertising and promoting the marks in Canada on its website on January 9, 2025.
The Complainant is also the owner of the domain name <canadaisnotforsalehat.com> registered on January 16, 2025, which redirects to the Complainant’s website at https://strongandfreehat.ca/. On the same date, the Complainant filed a Canadian trademark application for “CANADA IS NOT FOR SALE” No. 2374770 in class 25 covering headwear, apparel, and accessories, but it had not been registered by the time the Complaint was filed. The Complainant also claimed common law trademark rights in the name “CANADA IS NOT FOR SALE” and its French equivalent “LE CANADA N’EST PAS A VENDRE” through its use in connection with headwear, apparel, stickers, and signs. The Complainant alleged that these Marks had acquired significant distinctiveness and recognition across Canada as of January 15, 2025, established through a high degree of inherent distinctiveness, further reinforced by a strong reputation for the trademarks in a short period of time through extensive advertising and media coverage across Canada, through social media marketing, public endorsement by Premier Doug Ford (Premier of Ontario, Canada) on January 15, 2025 and substantial sales before the registration of the domain names in dispute.
The Complainant alleged that the Registrant, who runs a business in Ontario, that sells merchandise, primarily hats and hoodies, bearing the phrase “CANADA IS NOT FOR SALE” and its French equivalent, was using the disputed domain names <canadaisnotforsalehat.ca> and <canadanotforsalehats.ca> to sell counterfeit versions of Complainant`s Goods. The Complainant claimed that the Registrant’s websites imitated the Complainant’s merchandise and marketing materials, and that this activity had misled consumers into believing there is an affiliation between the parties.
As evidence, the Complainant submitted screenshots and archived versions of the websites, along with details of a product it purchased from the Registrant which closely resembled its own. The Complainant also pointed to the Registrant’s use of the phrase “Official Site” in Google advertisements as further proof of an intent to confuse the public. It maintained that this conduct constituted both copyright infringement and trademark misuse. The Complainant added that several Canadians had reported confusion, having mistakenly believed they were purchasing directly from the Complainant. In response to these activities, the Complainant had taken enforcement steps, including the initiation of two Federal Court proceedings. Furthermore, the Complainant contended that it had become concerned that the Registrant’s registration and use of the disputed domain names and alleged unlawful activities associated with the websites operating under the disputed domain names generated confusion amongst internet users and initiated this CDRP proceeding to seek the transfer of the disputed domain names from the Registrant.
The Complainant asserted that it had satisfied the three-part test set out in paragraph 3.1 of the CDRP. As to the first element, it contended that the disputed domain names are confusingly similar to its Mark, as they incorporate the Mark in full, or with only minor variations. The inclusion of the terms “hat” or “hats” does not reduce the risk of confusion; on the contrary, it reinforces the association with it`s branded products. The Complainant further alleged that the overall presentation of the Registrant’s website and the products sold thereat enhances the misleading impression of an affiliation. The Complainant further submitted that the Registrant had no legitimate interest in the disputed domain name and had registered and used it in bad faith. The Registrant, on the other hand, argued that it had independently adopted the slogan, “CANADA IS NOT FOR SALE”, and its use is lawful, expressive, and unconnected to the Complainant. It disputed the Complainant’s claim to trademark exclusivity over the phrase and argued that the Complaint lacks foundation.
It accused the Complainant of misrepresenting both the origin of its Goods and the strength of its trademark rights. It contended that the phrase “CANADA IS NOT FOR SALE” is a political expression, not a trademark capable of serving as a source identifier. It further argued that the slogan has been in use since at least the early 20th century and functions primarily as a statement of national sovereignty, rather than indicating the commercial origin of goods. The disputed domain name, according to the Registrant, merely describes the nature of the merchandise being sold, namely hats bearing a political message.
It further submitted that the slogan lacks acquired distinctiveness and contended that the Complainant’s claim of distinctiveness is based on an extremely short timeframe which it maintains is insufficient to establish secondary meaning. It also noted that the brief and recent promotional activity and short-term publicity given to the expression at issue did not meet the legal threshold for acquired distinctiveness of trademark rights. It maintained that the disputed domain names accurately described the product being offered, namely hats bearing a political slogan, and does not suggest any affiliation with Complainant. Furthermore, the phrase “CANADA IS NOT FOR SALE” is characterized as a widely used political expression that exists in the public domain and is not exclusive to the Complainant. As such, its use in the disputed domain names does not create a likelihood of confusion. As regard Legitimate Interest and Bad Faith, it argued that it has a legitimate interest in the disputed domain names within the meaning of the Policy and denied any bad faith on its part.
Panel`s Finding: The Panel reviewed the procedural history and determined that the Complainant does not possess registered trademark rights under the Canadian Trademarks Act for the mark “CANADA IS NOT FOR SALE” as its application no. 2374770 in class 25 which covers headwear, apparel, and accessories is still pending.
Even if the trademark is registered in the future, such a registration will have occurred after the registration of the disputed domain names and hence will not have satisfied the requirement in Article 3.1(a) of the Policy that the Complainant had its rights “prior to the date of registration of the domain name(s)…” Since the Complainant does not have a registered trademark, the Panel concluded that the Complainant had the opportunity to prove its trademark rights as a common law trademark, and that it had those rights prior to the date of registration of the disputed domain name, but it failed to show acquired distinctiveness of this expression despite the array of evidence presented.
The Panel was of the view that the entirety of the evidence pointed to the fact that the expression, “CANADA IS NOT FOR SALE” has been used by the Complainant as a slogan and exhortation rather than as a trademark which by definition must identify the source of the goods or services in question. Mere use of such a phrase as a slogan on clothing does not automatically establish common law trademark rights. For a trademark to acquire protection under common law, it must serve as a source identifier and not merely as a political or decorative statement. This contention by the Panel was reinforced by other aspects of the evidence which lent support to the Panel`s conclusion that the expression was used in a political sense as part of the public discourse on the issue that Canada should become the 51st State of the United States. On the totality of the evidence, it could not be said that the expression was used as a means of identifying the source of the Goods and products on which the expression appears rather than as part of an ongoing political and national debate. Thus, the Panel was of the opinion, based on the evidence, that the Goods were designed to make a political or social statement, prominently featuring the wording. This use does not indicate that the phrase “CANADA IS NOT FOR SALE” was intended to function as a source identifier for the Goods. Instead, it appears to have been employed primarily for its expressive or political message. In the result the Complaint was denied on the grounds that the Complainant failed to meet the necessary criteria for establishing common law trademark rights, and thus it could not be proved that the domain names were confusingly similar to “a mark in which the Complainant had Rights prior to the date of registration of the domain name(s)”to establish standing as required by paragraph 3.1(a) of the Policy.
Final Thoughts and Key Takeaway:
This case is important as it highlights the requirements for establishing unregistered or common law trademark rights for purposes of the CDRP, including the UDRP. In particular, it addresses the question whether a political slogan can function as a trademark for purposes of standing in UDRP proceedings. Panelists have consistently found that to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services (WIPO Overview 3.0, sec. 1.3).
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms or slogans (including political slogans such as in this case) which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
None of the evidence presented by Complainant in this case supported the Complainant’s assertion that its Mark acquired distinctiveness, and most importantly for a political slogan, that its Mark had achieved significance as a source identifier of its Goods. As the panel decided, Complainant would need to demonstrate that the expression “CANADA IS NOT FOR SALE” had achieved sufficient recognition by the relevant public in association with its Goods to serve a trademark function and concomitant secondary meaning, which it failed to do.
A key takeaway from this case is that when deciding to adopt trending political or social slogans as part of your branding strategy, consider if the slogan is capable of acquiring distinctive meaning as a source identifier to claim trademark exclusivity. If not, it cannot function as a trademark in connection with its use on your goods and products despite the popularity of such mark by the broader public and civil society, and you will not obtain exclusivity and trademark protection against third party infringement. As such, it will remain a mere expression or message supporting a political idea or cause and its use on your product or goods will from a legal perspective be viewed as merely ornamental or decorative.
Therefore, consult an experienced trademark lawyer for expert advice when adopting a slogan, political or otherwise, for use with any of your goods or services to determine if its use in association with your goods or services has acquired significant distinctiveness.
If any of your trademarks may be subjected to domain name abuse and you need assistance to file a domain name dispute resolution complaint to secure or enforce your digital brand, or need assistance in developing an enforcement strategy to safeguard your digital assets from all forms of infringement, violation and abuse,or where a trademark holder is challenging your domain name, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.
