Individuals or businesses may find themselves in a dispute over a domain name, whether as a complainant or the registered owner of the domain name.
Depending on the parties involved and where the domain name is registered, two potential avenues for domain name dispute resolution are through: (1) the Canadian Internet Registration Authority ("CIRA"), and (2) the World Intellectual Property Organization ("WIPO").
Part 1 of this two-part blog will address CIRA's dispute resolution process for .CA domain names. Part 2 will address WIPO's domain name dispute resolution process.
What is CIRA?
CIRA is a not-for-profit organization that oversees the .CA top-level domain, supports the development of Canada's internet community, and represents the .CA registry internationally. Currently, there are over two-million registered .CA domain names.
What types of disputes are heard?
The CIRA Domain Name Dispute Resolution Policy (the "Policy") is designed to resolve disputes over .CA domain names. Specifically, the stated purpose of the Policy is to "provide a forum in which cases of bad faith registration of domain names registered in the .CA country code top level domain name registry operated by CIRA can be dealt with relatively inexpensively and quickly."
Examples of disputes include domain names that infringe trademarks, or domain names that attempt to confuse users as to the owner or operator of the domain name.
Who can file a claim under CDRP?
A complainant under CDRP must satisfy the Canadian Presence Requirements for Registrants in respect of the domain name that is the subject of the proceedings unless the complaint relates to a trade-mark registered with the Canadian Intellectual Property Office.
Some examples of individuals or entities that meet the Canadian presence requirement include Canadian citizens, corporations, political parties, educational institutions, and government agencies.
How are domain name disputes administered?
Proceedings under the Policy are administered according to the CIRA Domain Name Dispute Resolution Rules (the "Rules"). A Proceeding is initiated when the party filing a claim under the Policy (the "Complainant") submits a written complaint in accordance with the Rules (a "Complaint"). After the Complaint is accepted, the registered owner of the disputed domain name (the "Registrant") is provided an opportunity to respond to the Complainant's allegations. Barring exceptional circumstances, there is no in-person hearing and disputes are resolved via written submissions.
Who adjudicates disputes?
Proceedings are administered by one of two providers approved by CIRA. Currently, the British Columbia International Commercial Arbitration Centre and Resolution Canada Inc. are the only dispute resolution service providers (each, a "Provider").
A one or three member panel will be named to determine the outcome of the dispute (the "Panel").
What must a Complainant establish?
In order to obtain a remedy, a Complainant must establish, on a balance of probabilities, that:
- the Registrant's .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 rights;
- the Registrant has registered the domain name in bad faith; and
- the Registrant has no legitimate interest in the domain name.
What makes a domain name "confusingly similar" to a mark?
Under paragraph 3.3 of the Policy, in determining whether a domain name is "confusingly similar" to a mark, the Panel will consider whether the domain name so nearly resembles the mark in appearance, sound, or the ideas suggested by the mark as to be likely mistaken for the mark.
What constitutes a "legitimate interest" in a domain name?
Paragraph 3.4 of the Policy provides a non-exhaustive list of examples of having a "legitimate interest" in a domain name. Some examples include:
- The domain name was a mark that the Registrant had rights in and used in good faith.
- The Registrant registered the domain name in good faith in association with its wares, services, or business.
- The Registrant used the domain name in good faith for a non-commercial activity such as criticism, review, or news reporting.
- The domain name comprised the legal name of the Registrant or was a name or other reference by which the Registrant was commonly identified.
It is important to note that even if the Complainant establishes the three-elements required for a successful claim, the Registrant will succeed if they establish, on a balance of probabilities, that they have a legitimate interest in the domain name.
What is considered "bad faith"?
Pursuant to paragraph 3.5 of the Policy, the following is a non-exhaustive list of circumstances that demonstrate evidence that the domain name was registered in bad faith:
- The domain name was registered primarily for the purpose of selling, renting, licensing or otherwise transferring the Registration to the Complainant or to a competitor of the Complainant.
- The domain name was registered in order to prevent the Complainant from registering a mark as a domain name.
- The domain name was registered primarily for the purpose of disrupting a competitor's business.
- The Registrant intentionally attempted to attract, for commercial gain, internet users to the Registrant's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Registrant's website.
What kinds of relief are available?
If the Panel decides in favour of the Complainant, the domain name will either be deleted or transferred to the Complainant.
If the Registrant is successful and proves on a balance of probabilities that the Complaint was commenced unfairly as an attempt to delete or transfer the domain name, then the Panel may order the Complainant to pay up to $5,000 to offset the costs incurred by the Registrant.
Furthermore, if the parties to the dispute are involved in another legal proceeding or arbitration involving the same domain name, the Panel has discretion to stay or terminate the proceeding.
To view the original article please click here.
(This is Part 1 of a two-part post)
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.