Canada: Domain Name Dispute Resolution Under The CDRP – The First Five Years

Last Updated: November 28 2006

Article by Antonio Turco, © 2006, Blake, Cassels & Graydon LLP

Originally published in Blakes Bulletin on Intellectual Property, November 2006

Like most domain name registries, the dot-ca registry, operated by the Canadian Internet Registration Authority (CIRA), has a dispute resolution policy. This article examines the CIRA Domain Name Dispute Resolution Policy (the CDRP) as it approaches its fifth anniversary.

CIRA took over responsibility for the dot-ca registry on December 1, 2000. CIRA began development of a dispute resolution policy in 1999. A first draft of the CDRP was posted for public comment in September 2000. A significantly revised draft was posted for further public consultation in September 2001. The final CDRP was posted on November 29, 2001 and was (and is) substantially different from the 2000 draft. While similar in structure to the Uniform Domain Name Dispute Resolution Policy (the UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN), the final CDRP has some very crucial differences. The CDRP became operative on June 27, 2002.

The purpose of the CDRP is to address instances of bad faith registration in the dot-ca space in relatively inexpensive and quick fashion. Registrants must submit to a Complaint pursuant to the CDRP if an aggrieved trade-mark owner elects to challenge a dot-ca domain name registration. Disputes are also governed by the CIRA Dispute Resolution Rules.

CDRP – The Test

In order to succeed under the CDRP, a complainant must establish three things, on a balance of probabilities: (i) that the registrant’s dot-ca domain name is confusingly similar to a mark in which the complainant had rights prior to date of registration of the domain name and continues to have such rights; (ii) that the registrant registered the domain name in bad faith; and (iii) some evidence that the registrant has no legitimate interest in the domain name.

It is important to remember that, under the CDRP, certain key terms, such as "rights" and "mark", are defined terms. As well, the scope of "bad faith", "confusingly similar", and "legitimate interest" is circumscribed in the CDRP.


Inconsistency on "confusingly similar". The CDRP defines "confusingly similar" narrowly. A domain name is "confusingly similar" to a mark if it so nearly resembles the mark in appearance, sound or idea suggested by the mark as to be likely to be mistaken for the mark. The language of the test reflects the provisions of the Trade-marks Act governing "prohibited marks", and so differs from the traditional likelihood of confusion test relevant to ordinary trade-marks; resemblance is usually, but not always, narrower than confusion. Although early decisions used a likelihood of confusion test, instead of the resemblance test, an increasing number of recent decisions have adopted the resemblance test. In one case, a panel rendered a decision in which the majority used the likelihood of confusion test, while the dissenting panellist applied the resemblance test. As yet, there is no clear consensus.

Finding Bad Faith. "Bad faith" is narrowly prescribed under the CDRP by an exhaustive list of three factors. A domain name is registered in bad faith if, and only if, at least one of the three following factors is established: (i) that the registrant registered the domain name primarily for the purpose of transferring it to the complainant, or its licensor or licensee, or a competitor thereof, for amount in excess of the registrant’s actual costs in registering the domain name; (ii) that the registrant registered the domain name in order to prevent the complainant, or its licensor or licensee, from registering the domain name, provided that the registrant has engaged in a pattern of registering domain names to prevent others who have rights in marks from registering those marks as domain names; or (iii) that the registrant registered the domain name primarily for the purpose of disrupting the business of the complainant, or its licensor or licensee, who is a competitor of the registrant.

However, many panels have found "bad faith" in circumstances which arguably do not fall within the scope of the factors listed in the CDRP. For example, in one case, the panel ignored the "bad faith" requirement altogether and ordered a transfer on the basis that the domain names were confusingly similar to the complainant’s marks and that the registrant had no legitimate interest in the domain names.

Such cases demonstrate that the narrow limits apparently prescribed by the CDRP regarding "bad faith" are not determinative where the facts of the case demonstrate bad faith in a broader sense.

Competitor. The third factor arises when the registrant registers the domain name primarily for the purpose of disrupting the business of the complainant, or its licensor or licensee, who is a competitor of the registrant. In this factor, the panel must assess not only whether the primary purpose was to disrupt the business of the complainant, but also the relationship between the complainant and the registrant, i.e., whether the registrant is a "competitor" of the complainant.

"Competitor" is not a defined term under the CDRP and has been considered in several decisions, without any consistency. Recent cases have expanded the definition of competitor beyond a traditional commercial competitor or someone who offers goods or services that compete with, or rival, the goods or services offered by the complainant. For example, a recent case found a registrant to be a competitor on the basis that the registrant was competing with the complainant for the attention of persons seeking certain services.

Legitimate Interest. A key difference between the CDRP and the UDRP is that the CDRP provides that, even if the complainant proves confusing similarity and bad faith registration, and produces some evidence that the registrant has no legitimate interest in the domain name, the registrant will nevertheless succeed if the registrant can establish that it has a legitimate interest. In other words, any legitimate interest of the registrant trumps the complainant, even if the registrant registered in bad faith a domain name which is confusingly similar to a mark of a complainant. A panel has yet to render a decision under the CDRP where bad faith and confusing similarity were found, but the legitimate interest of the registrant was used to justify denying the complaint.

Cancellation. In one case, involving the domain name , the domain name was not transferred and instead was cancelled. In this proceeding, although the complainant was successful, the panel found that it was not entitled to a transfer of the registration. The panel found that the domain name was a composite of two well-known marks owned by different entities and, although the complainant had demonstrated that it had rights in one of the marks, it had not shown that it had rights in the other so as to entitle it to the registration at issue.

Bad Faith Complaint. The CDRP allows a registrant to make an allegation that a proceeding under the CDRP was commenced for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of a registration which is the subject of the complaint. If the registrant is successful in the proceeding, and can establish bad faith on the part of the complainant in commencing the proceeding, a panel may order the complainant to pay to the registrant an amount of up to CAD 5,000. Although several registrants have made allegations of bad faith, to date no panel has made such a finding against a complainant.

CDRP – By The Numbers

As of September 30, 2006, 63 decisions had been rendered pursuant to the CDRP, despite the fact that over 740,000 dot-ca domain names had been registered. This limited volume may suggest that potential complainants view the CDRP as more friendly to registrants than to complainants.

The complainant was successful (or partially successful) in securing transfer of the disputed domain name(s) 73% of the time (46/63). In the majority of those cases (38/46 or 82.6%) no response was filed by the registrant. In the contested cases, the transfer of the domain name was granted 64% of the time (16/25).

Generally, where the registrant failed to file a response, the complainant had an 81.5% success rate (31/38). However, in a little over 18% of the cases, the complainant failed to secure the transfer of the domain name, despite the failure of the registrant to file a response (7/38).

Where a complainant failed to secure the transfer of the domain name, the complainant’s inability to demonstrate bad faith on the part of the registrant was the primary reason for denying the complaint (11/17 or 64.7%). The second most common reason (5/17 or 29.4%) why a domain name was not transferred was that the complainant had failed to demonstrate that it had rights in a mark which would permit it to succeed. In the remaining case mentioned above, the complainant was successful on the complaint, but the domain name was cancelled instead of transferred.


In June 2006, CIRA announced that it intends to undertake a comprehensive review of the CDRP in order to assess and suggest reforms in terms of its fairness, understandability, accessibility and efficiency. The outcome of this review, and the growing body of case law under the CDRP, will determine whether the CDRP will live up to its stated purpose.

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.

Events from this Firm
26 Oct 2018, Other, Vancouver, Canada

Cybersecurity, including data privacy and security obligations, has become a critical chapter in every company’s risk management playbook.

30 Oct 2018, Other, Toronto, Canada

Please join us for discussions on recent updates and legal developments in pension and employee benefits as well as employment law issues.

12 Nov 2018, Other, Toronto, Canada

Stories aren’t falsehoods. Stories are the root of all effective human communications: they motivate, animate and clarify. If you aren’t telling stories, you probably aren’t getting your point across.

In association with
Related Topics
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

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