Canada: Domain Name Disputes: What You Need To Know – Part 2

Part 1 of this post provided an overview of the Canadian Internet Registration Authority's domain name dispute resolution process. Part 2 outlines a similar process available through the World Intellectual Property Organization's ("WIPO") Arbitration and Mediation Center.

What is WIPO?

WIPO is a United Nations agency that provides a global forum for intellectual property services, information, and cooperation. The organization's stated objective is to promote the protection of intellectual property throughout the world through cooperation, as well as collaboration with other international organizations.

What types of domain name disputes are heard?

Domain name dispute resolution is administered under the Uniform Domain Name Dispute Resolution Policy ("UDRP").

Pursuant to paragraph 4 of UDRP, domain name dispute resolution is only available for disputes concerning an alleged abusive registration of a domain name.

Who can file a complaint under the UDRP?

Any individual or company can file a domain name dispute concerning a generic top level domain (a "gTLD"). The most common gTLDs are .COM, .INFO, .NET, and .ORG.

For a country-code top level domain ("ccTLD"), the UDRP only applies if it has been voluntarily adopted. A list of ccTLDs for which WIPO provides domain name dispute resolution services is available here.

How are domain name disputes administered?

Domain name disputes are administered under the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").

The administrative procedure for a domain name dispute begins when the party bringing the complaint (the "Complainant") files the complaint (the "Complaint") with an approved dispute resolution service provider. The registered domain name holder (the "Registrant") is then entitled to file a response.

Similar to domain name disputes under CIRA, only in exceptional circumstances will there be an in-person hearing.

Who adjudicates disputes?

Currently, the approved dispute-resolution service providers are WIPO, the Asian Domain Name Dispute Resolution Centre, the National Arbitration Forum, the Czech Arbitration Court, and the Arab Center for Domain Name Dispute Resolution.

Each provider follows the Rules as well as their own supplemental rules for domain name dispute resolution.

What must a Complainant establish?

In order to obtain a remedy, a Complainant must establish the following:

  • The domain name registered by Registrant is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
  • The Registrant has no rights or legitimate interests in respect of the domain name; and
  • The domain name was registered and is being used in bad faith.

What constitutes a "legitimate interest" in a domain name?

Paragraph 4 of the UDRP provides a list of circumstances that will demonstrate rights or a "legitimate interest" to the dispute domain name:

  • Before any notice of the dispute, the domain name was used by the Registrant in connection with a bona fide offering of goods or services.
  • The Registrant is commonly known by the domain name.
  • The Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

What is considered "bad faith"?

Paragraph 4 of the UDRP also provides a non-exhaustive list of some examples of a "bad faith" registration of a domain name:

  • The domain name was acquired primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant.
  • The domain name was registered to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
  • The domain name was registered in order to disrupt the business of a competitor.
  • The domain name is being used to intentionally as an attempt to attract, for commercial gain, internet users to a website by creating a likelihood of confusion with the Complainant's mark.

What kinds of relief are available?

If the Panel decides in favour of the Complainant, the disputed domain name will either be cancelled or transferred to the Complainant. If a decision is rendered in favour of the Registrant, the Complaint will be dismissed. No monetary penalties or costs are awarded.

Similar to CIRA, if the parties to the dispute are involved in other legal proceedings involving the same domain name, the Panel has discretion to suspend or terminate the Complaint.

Are previous decisions released?

Previous decisions of WIPO Panels are available here. WIPO has also produced a guide with selected decisions and commentary that will assist parties in domain name disputes, available here.

(This is Part 2 of a two-part post; Part 1 can be found here.)

To view original article, please click here.

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.

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