Certain disputes involving alleged bad faith registration of .ca domain names can be resolved by arbitration pursuant to the Domain Name Dispute Resolution Policy (known as the “CDRP”) mandated by the Canadian Internet Registration Authority (“CIRA”). The CDRP’s mandatory administrative dispute resolution process is binding on .ca domain name registrants because it is incorporated by reference into .ca domain name registration agreements. The CDRP is modeled on the Uniform Domain Name Dispute Resolution Policy (known as the “UDRP”) that applies to .com, .org, .net and other domain names. However, the CDRP contains certain provisions that are distinctly Canadian and are designed to improve upon the UDRP.
In August 2011, CIRA made a number of significant changes to the CDRP. Following is a summary of the most important changes:
- Bad Faith: To succeed in a CDRP proceeding, a complainant must establish that the disputed domain name was registered in “bad faith”. The amended CDRP lists a number of circumstances that are evidence of bad faith, including a new circumstance borrowed from the UDRP – the domain name was registered to confuse and divert Internet traffic to the registrant’s website for commercial gain. In addition, the listed bad faith circumstances are now non-exhaustive, like the UDRP. This change increases the circumstances in which a CDRP proceeding can be used to successfully challenge a confusing domain name.
- Confusing Similarity: The CDRP applies only if the disputed domain name is “Confusingly Similar” to the complainant’s trade-mark. The amended CDRP clarifies that the test for “Confusingly Similar” is a narrow resemblance test (which has been applied in most decisions), rather than a broader confusion test that is usually applied in trade-mark disputes.
- Rights in a Mark: The amended CDRP removes restrictions that limited the circumstances in which a complainant could establish rights in a trade-mark. This amendment aligns the CDRP with the UDRP.
- Legitimate Interest: To succeed in a CDRP proceeding, a complainant must provide some evidence that the registrant has no “legitimate interest” in the disputed domain name, and then the burden shifts to the registrant to prove that it has a legitimate interest in the domain name. The amended CDRP lists a number of circumstances that are evidence of legitimate interest, including expanded circumstances that establish legitimate interest in a domain name comprised of generic or descriptive terms. In addition, the listed legitimate interest circumstances are now non-exhaustive, like the UDRP. This change increases the circumstances in which a registrant can establish a legitimate interest in a domain name and successfully defend a CDRP proceeding.
- Fee Payments: The amended CDRP separates filing fees and panel fees. The filing fee (currently $1,000) is due when the complaint is filed. The panel fee (currently $1,750 or $3,000, depending upon the number of panellists) is payable only if the case is not settled and a decision is required.
For trade-mark owners, the most significant amendment to the CDRP is the change regarding the “bad faith” registration requirement. This change removes a significant barrier to trade-mark owners using the CDRP to challenge confusing domain names. Trade-mark owners who were unable to invoke the CDRP in the past - because of the restrictive and exhaustive definition of “bad faith” - may now be able to do so.