After months of consultation, the Canadian Internet Registration Authority (CIRA) has just announced that the Domain Name Dispute Resolution Policy for dot-ca domain names is now in force. This means that owners of Canadian trade-marks now have available to them a mechanism for disputing the registration of confusingly similar dot-ca domain names that is as quick and inexpensive as the mechanism under ICANN’s Uniform Dispute Resolution Policy (UDRP) for disputing the registration of dot-com domain names.
Michael D. Manson, a partner in our Vancouver office, has been appointed as a panellist by the British Columbia International Commercial Arbitration Centre, one of two private sector dispute resolution service providers appointed by CIRA to administer the policy.
Though the Canadian domain name dispute resolution policy shares many features of the UDRP, it differs in several significant respects. First, persons who wish to bring a complaint under the policy must comply with the Canadian Presence Requirements for registrants of dot-ca domain names. The only exception to this rule is a non-Canadian owner of a registered trade-mark in Canada. Second, the policy includes a penalty of up to $5000 for filing clearly spurious complaints against legitimate domain names. Third, all disputes must be resolved by a three-person panel, except in those cases where the domain name registrant chooses not to participate.
The new policy is designed to provide a forum in which clear cases of bad faith registrations of dot-ca domain names can be addressed. Under the policy, a bad faith registration of a domain name is one that is intended (i) primarily for the purpose of sale to someone who has rights to a trade-mark or trade-name that is confusingly similar to the domain name; (ii) to prevent someone who has rights to a trade-mark or trade-name from registering it as a dot-ca domain name; or (iii) to disrupt the business of a competitor who has rights to a trade-mark or trade-name.
A domain name registrant will succeed against a complainant under the policy if it can prove that it has a legitimate interest in the domain name in dispute. The policy includes a broad definition of legitimate interests that takes into account most good faith uses of a domain name, whether commercial or non-commercial.
Proceedings under the policy are expected to take up to 120 days, from start to finish.
For more information on initiating a complaint under Canada’s new domain name dispute resolution policy, please contact Elliott Simcoe (Ottawa), Mark Evans (Toronto), Christian Bolduc (Montreal) or Tim Lo (Vancouver).
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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