After months of consultation, the Canadian Internet Registration Authority has announced that the domain name dispute resolution policy for .ca domain names is in force. Consequently, owners of Canadian trademarks now have a mechanism for disputing the registration of confusingly similar '.ca' domain names that is as quick and inexpensive as the Uniform Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) for .com domain names.
Though the Canadian domain name dispute resolution policy shares many features of the UDRP, it differs in several significant respects. First, individuals wishing to make a complaint under the policy must comply with the Canadian presence requirements for registrants of .ca domain names (the exception to this rule is non-Canadian owners of registered trademarks in Canada). Second, the policy includes a penalty of up to C$5,000 for filing spurious complaints against legitimate domain names. Third, all disputes must be resolved by a three-person panel, except where the domain name registrant chooses not to participate.
The new policy is designed to provide a forum in which clear cases of bad-faith registrations of .ca domain names can be addressed. A bad-faith registration of a domain name occurs when:
- the main purpose of registration is to sell the domain name to an individual who has rights to a confusingly similar trademark or trade name;
- registration aims to prevent someone who has rights to a trademark or trade name from registering it as a .ca domain name; or
- registration aims to disrupt the business of a competitor who has rights to a trademark or trade name.
Under the policy, a domain name registrant will succeed against a complainant if it can prove a legitimate interest in the disputed domain name. The policy includes a broad definition of ‘legitimate interests’ which takes into account most good-faith uses of a domain name, whether commercial or non-commercial.
Proceedings under the policy are expected to be take up to 120 days. Two private sector dispute resolution service providers will administer the policy, namely the British Columbia International Commercial Arbitration Centre and Resolution Canada.
For further information on this topic please contact Elliott Simcoe at Smart & Biggar by telephone (+1 613 232 2486) or by fax (+1 613 232 8440) or by email ([email protected]).