This month’s entry focuses on a third way to protect your brand from cybersquatting and cyberpiracy which is by way of CPRP proceedings. These proceedings are available to Canadians and the owners of registered Canadian trademarks to resolve disputes concerning .ca domain names.
While the UDRP has been adopted by all accredited domain name registers for the gTLDs it has not been adopted by all managers of ccTLDs. The Canadian Internet Registration Authority (CIRA) has developed and adopted its own domain name dispute resolution policy (CDRP) and rules. While the CDRP appears to be have been modeled after the UDRP policy there are significant differences between the two. For example, the complainant must satisfy the Canadian presence requirements, or the proceedings must relate to a trademark registered in Canada.
Unlike the UDRP three panelists must be appointed unless the respondent defaults in which case only one panelist is required. As a result, CDRP proceedings are more expensive and take more time to resolve.
The application of the CDRP is limited to situations in which a complainant establishes that:
- the registrant’s dot-ca domain name is Confusingly Similar to a Mark in which the complainant had Rights prior to the date of registration of the domain name and continues to have such Rights;
- the registrant has no legitimate interest in the domain name as described in CDRP; and
- the registrant has registered the domain name in bad faith as described in CDRP.
The terms Confusingly Similar and Mark, are defined in CDRP in a detailed fashion. This differs from the UDRP which is much more open-ended. A domain name is “confusingly similar” to a “mark” if the domain name so nearly resembles the mark in appearance, sound or the ideas suggested by the mark as to likely to be mistaken for the mark.
The concept of “Bad Faith” is applied in a fashion roughly similar to the UDRP. Showing actual bad faith by positive evidence can be difficult, particularly given the limited scope of the inquiry in CDRP proceedings. As a result, panels typically consider the surrounding circumstances and draw inferences to determine whether bad faith has been shown.
If a panel decides for the complainant, the panel will decide whether the registration should be deleted or transferred to the complainant.
If the registrant succeeds and the registrant proves, on the balance of probabilities, that the complaint was commenced to attempt, unfairly and without colour of right, to obtain a transfer of the registration, the panel may order the complainant to pay up to five thousand dollars ($5,000) to defray the costs incurred by the registrant in preparing for and filing material in the proceeding.
The CDRP WHOIS Privacy Policy applies to the proceedings. Under this policy the personal information of individual domain name registrants is automatically protected as private subject to specific, limited circumstances. Full registration information for corporate domain name holders is accessible. A system is in place for forwarding correspondence to registrants without disclosure of contact information.
On request, CIRA will supply any person who wishes to initiate a proceeding against a registrant regarding a specific domain name under the CDRP a list of the dot-ca domain names registered in the name of the registrant or, if the name of the registrant is unavailable via WHOIS, a list of the domain names registered in the name of the same registrant as that domain name.
In CDRP proceedings where the registrant’s identity is not published in the public WHOIS database, the complainant may make a further submission to the Panel, including adducing further evidence, limited to the registrant’s legitimate interest (or lack thereof) in a domain name.
If you have questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.