After extensive consultations, on July 22, 2011, the Canadian Internet Registration Authority (CIRA) released a revised Domain Name Dispute Resolution Policy (CDRP). The changes will take effect August 22, 2011.
Many of the changes CIRA has announced are welcome. The current CDRP has a reputation of being technical, narrow, expensive, and for often not providing recourse against clear cases of cybersquatting. The changes will bring the CDRP more into line with the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Among the most significant changes are the following:
1. Broader scope of rights protected under the CDRP, but some limitations remain. The current definitions of “rights” and “use” of a trade mark will be removed. Hopefully, the change will make it easier for trade mark owners to establish rights under the CDRP. However, CIRA will be maintaining the requirement that the complainant have rights prior to the registration of the domain name. This means that it will be impossible for a complainant to succeed if a domain name was registered after a new product, service or business is announced, but before an actual launch in Canada. Also, to show rights to the mark, it must be either used or registered in Canada so owners of foreign marks generally will be unable to take advantage of the CDRP (even if a Canadian trade mark application has been filed for the mark). CIRA is also not changing the eligibility requirements to file a CDRP complaint, so foreign businesses that do not own registered Canadian trade marks remain ineligible to bring complaints under the CDRP.
2. The factors to prove bad faith registration and legitimate interest in a domain name will be non-exhaustive. The current exhaustive factors are very restrictive, and often resulted in panels adopting very flexible interpretations to allow the CDRP to address clear cases of cybersquatting.
3. Registrants will no longer be required to use generic or descriptive domain names to show a legitimate interest. The CDRP currently requires that registrants operate an active website reflecting the generic or descriptive nature of a domain name to show good faith. The CDRP is being changed so that registrants can show good faith if they can demonstrate that they registered a domain name for its generic or descriptive quality, regardless of whether or not the domain name has been used with an active site. CIRA is of the view that requiring the use of generic domain names to establish a legitimate interest puts an unfair onus on registrants. There is some concern that this change will enable a cybersquatter to “passively hold” a domain name that has both trade mark and generic significance and be able to successfully claim “good faith.”