Do you have a .CA domain name?
Would you be concerned if someone else registered your trade-mark or corporate name as their domain name?
The .CA domain name registry will shortly undergo important changes that will make it easier for you (and for others) to obtain registration of .CA domain names of interest to you. Although the new rules for registration have not yet been finalized and many key issues remain unresolved, we recommend that planning begin now in order to protect your trade-marks and business names should you wish to secure these as .CA domain names.
Restrictions of Current System
Under the current .CA domain name rules:
- Subject to certain exceptions, .CA domain names can only be registered by organizations incorporated or chartered in Canada and by organizations owning a Canadian trade-mark registration or pending trade-mark application.
- The domain name chosen must either closely correspond to the registrant's legal name or operating name or exactly match the registrant's trade-mark.
- Each organization can register at most one domain name, or one domain name in each official language if the organization has legal names in both English and French.
New "Open" System
Under the new .CA domain name system:
- While it is uncertain what form it will take under the new rules, it appears that a Canadian presence requirement will remain in one form or another. The draft new rules propose that all registrants will have to be Canadian citizens, residents, companies or other legal entities, and will have to be either resident in Canada or physically present and operating in Canada. Specific requirements such as incorporation or registration in Canada, the establishment or existence of an office in Canada and/or the presence of a full-time paid employee in Canada are also under consideration.
- The connection between the domain names chosen and the registrant's trade name or trade-marks will no longer be required.
- Individuals and organizations will be allowed to register an unlimited number of .CA domain names.
- We will likely see a mandatory on-line arbitration process for trade-mark/domain name conflicts. How this process will work is still under consideration, although there may be some resemblance to the current Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy.
- The new registry will accept applications through a number of competing certified registrars, including Internet service providers. The new registry will charge a standard annual fee for registration and individual registrars will be free to set their own additional fees for a set term or terms of registration.
It Is Particularly Important to Note That Under The New System:
- Entitlement to registration will be determined on a first-come, first-served basis. As trade-mark owners will not be given the opportunity to pre-register .CA domain names corresponding to their trade-marks before the new rules take effect, businesses will be vulnerable to having their names and marks registered by cybersquatters, domain name registrants who register names and then seek to resell them to their legitimate owners or to competitors.
- The Canadian presence requirement will remain of significant concern, as registrants under the current rules who either do not meet or cease to meet the new Canadian presence requirement could lose their existing domain name registrations, regardless of any trade-mark rights. It is also possible that trade-mark owners not meeting the Canadian presence requirement will be barred from participation in the new alternative dispute resolution process to address trade-mark/domain name conflicts. Whether or not a trade-mark owner will be able to defeat a domain name registrant making bona fide use of a domain name confusing with the trade-mark is also still under consideration.
While it is expected that the new rules will be in effect in Fall 2000, the exact date upon which the new rules will come into effect is still undecided. We will soon be entering the first stage of the transition process. During this stage:
- All current .CA domain name registrants will have to re-register their domain names with the new registry. Current registrations that do not comply with the new rules, and in particular the new Canadian presence requirement, may not survive beyond this stage once the new rules take effect.
- The registry will be contacting current registrants (likely by an e-mail to the listed administrative contact) to advise them of the procedure for re-registration. It is important that you respond promptly and properly to this e-mail correspondence if you wish to retain your .CA domain name.
While We Await Finalization of The Rules, We Recommended That You:
- Register your primary mark or name before the new rules come into effect in order to block competing interests from appropriating it. Under the current system, names must be between three and sixty-three characters long, although a two character name may be accepted if it is clear the name represents the applicant's corporate or organizational identity. Once you have compiled the necessary documentation, the registration process should take approximately ten days.
- Compile a list of all domain names you may wish to register under the new system. Consider trade-marks (both registered and unregistered) owned by your company, brand names, trade names and slogans that you currently use or may wish to use in the future.
For further information on these issues and assistance in preparing for the changes affecting the .CA registry, please contact your Gowlings professional. The contents of this publication are intended for informational purposes only and should not be construed as legal advice or legal opinion, which can be rendered properly only when related to specific facts.