Canada: Navigating The Canadian Domain Name Landscape

Non-Canadian entities operating in or planning to enter the Canadian market would be well advised to consider acquiring a '.ca' domain name sooner rather than later

Registering a domain name in the country-code top-level domain '.ca' may not always be a high priority in a brand's global protection strategy. However, non- Canadian entities operating in or planning to enter the Canadian market would be well advised to consider acquiring a '.ca' domain name sooner rather than later. The intricacies involved in acquiring – and enforcing – these domain names can make delay costly and detrimental.

The Canadian Internet Registration Authority (CIRA) has strict rules governing eligibility to own a '.ca' domain name in the form of the Canadian Presence Requirements (CPRs).

While Canadian individuals and entities can register any available '.ca' domain name without needing to demonstrate prior rights or legitimate interest, the CPRs restrict ownership by non-Canadians to '.ca' domain names which consist of or include the exact word component of a Canadian trademark registration owned by the registrant. Since Canadian trademark registrations generally take at least 18 months to issue, there can be a significant delay from the time that steps are taken to protect rights in Canada and the time at which a non-Canadian can register a '.ca' domain name. Moreover, since the CPRs restrict ownership by non- Canadians to domain names including the exact word component of a registered Canadian mark, even with a trademark registration there continue to be restrictions as to which '.ca' domain names can be acquired. For example, domain names comprising variations, short forms or common misspellings of a registered mark are all prohibited.

As a result of the CPRs, many non- Canadian entities simply do not satisfy the test for '.ca' ownership. This can result in a scenario whereby once the foreign entity does finally turn its mind to the '.ca' extension, or its corresponding Canadian trademark issues to registration, an eligible owner has already swooped in and registered the '.ca' domain name of interest or, worse, a '.ca' domain name that interferes with the foreign entity's business.

However, even in such circumstances, all is not necessarily lost.

Challenging a '.ca' registration

The Canadian Internet Registration Authority's Dispute Resolution Policy (CDRP) can be initiated by non-Canadian entities seeking to contest a '.ca' domain name. However, non-Canadian entities face strict eligibility requirements here as well, defined in the CDRP Policy as: "Eligible Complainants. The person initiating a Proceeding (the 'Complainant') must, at the time of submitting a complaint (the 'Complaint'), satisfy the Canadian Presence Requirements for Registrants in respect of the domain name that is the subject of the Proceeding unless the Complaint relates to a trade-mark registered in the Canadian Intellectual Property Office ('CIPO') and the Complainant is the owner of the trade-mark."

As the highlighted wording indicates, the eligibility requirements to commence a CDRP are more lenient than the CPRs relating to ownership of a '.ca' domain name. Non-Canadian entities have room to challenge a '.ca' domain which relates to a Canadian trademark registration which they own and not just one that comprises or includes the exact word component of their Canadian trademark registration. The slightly broader scope afforded by this wording appears to encompass '.ca' domain names comprising a misspelling, minor variant or other small typographic error relating to a Canadian registered trademark. For example, in Google, Inc v Glynis Fraser US company Google, Inc satisfied CDRP eligibility requirements on the basis that the contested domain name '' was related to its Canadian trademark registration for GOOGLE. (At the time of the CDRP complaint, the complainant owned only a pending Canadian trademark application for FROOGLE.) However, potential complainants should be careful since it is unclear to what extent the domain name must relate to the registered trademark and there are no known criteria for determining whether the domain name and registered Canadian trademark are sufficiently related to qualify.

The distinction in the eligibility requirements for ownership of '.ca' domain names versus commencement of a CDRP can lead to the ironic outcome where a foreign entity is eligible to commence a CDRP, but not to directly own the '.ca' domain name which is the subject of a successful complaint. This raises potential issues at the time the domain name is transferred or in selecting the appropriate remedy (transfer versus cancellation of the domain name).

An alternative approach in some cases is for a foreign entity's related Canadian corporation to lodge the CDRP complaint in order to satisfy the eligibility requirements. Indeed, the CDRP Policy provides that a complainant can rely on acquired or possibly licensed rights.

These include where the registrant's '.ca' domain name is confusingly similar to a mark in which the complainant had rights before the date on which the domain name was registered and continues to have such rights. The 'mark' here is defined as a trademark – including the word elements of a design mark or a trade name – that has been used in Canada by a person, or the person's predecessor in title, for the purpose of distinguishing the wares, services or business of that person or predecessor or a licensor of that person or predecessor from the wares, services or business of another person.

In recent CDRP decisions panels have taken a conservative view when complainants have relied on marks that have been licensed or acquired from a non-Canadian owner and have challenged the complainant's prior common law rights, particularly where it appears that the complainant was established and the trademark rights transferred for the purpose of meeting CDRP eligibility requirements. For example, in Asos Canada Services Ltd v Nexon Media Inc ((2013), 110 CPR (4th) 386), the panel held as follows: "Nor is it correct that the subsequent incorporation in Canada of the Complainant somehow created a retroactive right to claim a right in the .ca domain name. ...The Complainant's incorporation in Canada and subsequent transfers of the rights to the common law trademark...might be interpreted as an attempt to get around a material precondition of the CPR."

Similarly, in Ebates Canada Inc v Cranhill ((2012), 103 CPR (4th) 398), it was held as follows: "15 Did the Complainant have rights prior to the date of registration of the domain name? ... 18 The Complainant relies upon a license from its parent company to back date its rights. The Complainant's license from its parent company does not endow it with an earlier date of incorporation. It cannot meet the test set out in 4.1(a) of the Policy. To find otherwise would allow an ineligible complainant to proceed by proxy."

Accordingly, it seems possible that a panel will interpret the above decisions to stand for the principle that common law rights acquired by the complainant from a foreign entity after the date of the contested domain name registration are not a valid basis on which to establish prior rights. Moreover, Ebates has been cited for the proposition that to establish prior rights, the complainant (and by extension its predecessor in title) must also have met the CPRs and thus had rights and eligibility to register the contested '.ca' domain name prior to the domain name registration by the registrant. However, this interpretation seems inconsistent with the CDRP Policy and past CDRP decisions. As CDRP decisions are non-binding, it may not be followed on this point.

Establishing prior rights

Assuming that eligibility requirements to commence a CDRP can be satisfied, the complainant must establish prior rights in Canada to a confusingly similar mark. In the absence of earlier registered rights, the complainant will need to rely on Canadian common law rights which pre-date the registration of the domain name by the respondent in the CDRP. It can be difficult for any complainant – but in particular, non-Canadian complainants – to establish Canadian common law rights through use. The analysis of common law rights would be fact based and depend on the evidence of use and reputation adduced. In Guitar Center, Inc v Pipemi the panel held that the US-based complainant established common law use of its mark GUITAR CENTER in Canada on the basis of evidence showing that:

  • it operated numerous retail locations, including many within 100 miles of the Canadian border;
  • Canadians regularly visited these locations; and
  • the complainant operated a '.com' website accessible to Canadians.

Conversely, in a 2010 CDRP decision the panel held that the complainant did not show sufficient use of the website luxist. com by Canadians prior to registration of the contested domain name 'luxist. ca' to establish earlier rights in Canada – despite finding that the respondent in the dispute was likely sufficiently aware of the complainant's LUXIST mark and brand to infer that the contested domain name was registered in bad faith. Accordingly, even strong brands primarily operating outside of Canada or entirely online may be surprised to find challenges in establishing prior rights in Canada in the context of a CDRP.

Ownership of domain names

Non-Canadian entities thwarted from registering a '.ca' domain name as a result of these territorial restrictions should also be cautioned against simply electing or paying an unrelated Canadian third party to register the '.ca' domain name on its behalf.

First, CIRA has additional registrant rules that clearly prohibit the use of such proxy registrations to meet registrant eligibility requirements.

Moreover, there is the risk that it might cast doubt on the legal ownership of the domain name. In the recent opposition decision in Mapquest, Inc v The Lodging Company Reservations Ltd (2014 TMOB 113) the Opposition Board rejected the opponent's claim that it had beneficial rights to a domain name comprising the identical word component of the opposed trademark since the domain name had been registered in the name of a different entity – the opponent's parent company. The practical reality is that entities, for a myriad of reasons (eg, technical, administrative), often elect for third parties to serve as the registrant of record of a domain name, while retaining control as well as beneficial or legal ownership of the domain name.

Interestingly, the distinction between registrant and beneficial owner was recently recognised by the Ontario Superior Court in the 2013 case of Inc v Inc, in which the judge ruled that the registrant of a domain name is not automatically or necessarily its legal owner. This decision is also a good example of how in some circumstances, a complainant may have better standing and success in a court action for trademark infringement, passing off or other claims than it would in a CDRP.

With the implementation of Bill C-31 and the expected amendments to Canada's Trademarks Act it remains to be seen whether the greater ease of obtaining a Canadian trademark registration will make ownership of '.ca' domain names more feasible and also more competitive for non- Canadians.

This article first appeared in World Trademark Review Magazine

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions