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Dot-ca Domain Dispute Rules Changes Coming This Month

The “Canadianization” of the ICANN UDRP reflected a consensus that the CDRP should be balanced and impartial and that Canada was positioned to correct perceived flaws in the international model. The result was a policy that borrowed its structure from the ICANN UDRP, since that process was familiar to many within the legal and Internet communities. The Canadian policy calls for quick adjudication of all disputes in a cost-effective manner and ensures that either party may still launch a court action if they are left unsatisfied.

Trademark holders who believe a dot-ca domain name registration involves cybersquatting may file a claim supported by evidence of their rights to the trademark, bad faith by the domain name registrant, and the fact that the registrant has no legitimate interest in the name.  The domain name registrant is then provided with an opportunity to rebut the claim. Expert panelists adjudicate the cases with written decisions delivered within a few months.

The CDRP has dealt with many well-known trademarks over the years. Recent cases include the transfer of ultimatefightingchampionship.ca, ufc.ca, jockey.ca, mentos.ca, and americanidol.ca to trademark holders.

The organization recently announced a series of reforms set to take effect later this month that, once implemented, will more closely mirror the ICANN UDRP and could lead to an increase in complaints.

The most important change involves an expanded definition of what constitutes “bad faith” under the policy. Both the ICANN and CIRA dispute models are intended to be limited to clear cases of cybersquatting and the bad faith definition establishes the boundaries of potential claims.

The CDRP initially included an exhaustive list of bad faith characteristics including registering a domain name with the intent to sell it to the trademark holder or registering multiple domain names that correspond to trademarks (a practice known as warehousing domains).

The exhaustive list was intended to guard against the ICANN experience where dispute panelists ventured well beyond clear cases of cybersquatting by creating their own categories of bad faith. Under the new CIRA policy, the bad faith list is now non-exhaustive, opening the door to more domain name dispute claims and increasing the risk of inconsistent decisions.

The new policy does, however, provide greater protection for registrants of generic domain names. These include generic words that may correspond to a trademark, but are widely used for many other purposes.  Registrants will no longer be required to marshall evidence they have used the generic domain in order to claim a legitimate interest.

Other changes include shortening the implementation period to allow for faster domain name transfers after a decision is released and allowing for domain names to change hands during the dispute process should the parties settle the case.

5 Comments

  1. So coming soon we’ll have the Canadian version of ICE shutting down .ca domains that corporations don’t like?

    Maybe people should post “So and So SUCKS!” slash pages on domains they don’t use?

  2. CndCitizen says:

    What does that mean for people that have thier own sites?
    I have domains that I have paid for since 200x…what happenes to them? I have help them for years and sometimes before the .com company has even been around…so if I have the sites before they were incoporated. Then I still own the domain….

    help?

  3. @CndCitizen
    My guess is he who has the bigger wallet will own the name, regardless if you had it forever, in true Canadian fashion. Look at the Target name dispute and countless Olympic/Olympia/Olympus pizza places (some been around for 50 years) vs. VANOC….

  4. Dona House says:

    Law above all
    I think that this is the right way to deal with all types of misunderstandings- fast and according to the law – the problem could be only if law is created properly or not…

    Removals and Storage

  5. Dwight Williams says:

    And given those firms with the bigger wallets?
    The fear is that the laws and regulations to come will be rigged in their favour because it’s deemed Right and Proper to do so. We need to avert that rigging.