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April 15, 2015 Vol. 70 No. 8 Back to Bulletin Main Page

CANADA: Brand Protection Through Canadian.ca Domain Name Dispute Resolution Policy


A recent decision under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy (CDRP) highlights a useful brand protection tool for brand owners in Canada.

Optrex Limited v. Nameshield Inc. (December 17, 2014) involved a dispute over the optrex .ca domain name. Optrex Limited (Complainant) is a manufacturer and retailer of eye care products sold in association with the registered trademark OPTREX, which it has used in Canada for decades. The Complainant also operates a website at the domain name optex.co.uk. Nameshield Inc. (Registrant) registered the domain name optrex.ca on October 23, 2012.

On October 14, 2014, the Complainant submitted a complaint to CIRA pursuant to the CDRP requesting the transfer of the optrex.ca domain name registration to it on the basis that among other things: 

  1. The Registrant has no legitimate interest in or any rights in the OPTREX trademark and has not used the mark in good faith or at all; and

  2. The Registrant registered the domain name in bad faith.

The CDRP is based on the principle that the first party to register a domain name has priority over it. A complainant must prove on a balance of probabilities that:

  1. The registrant’s .ca domain name is confusingly similar to a mark in which the complainant has rights prior to the registration of the domain name and continues to have rights;

  2. The registrant has no legitimate interest in the domain name; and

  3. The registrant has registered the domain name in bad faith.

Evidence was filed by the Complainant to establish that the Registrant and its sole director collectively hold 4,664 .ca domain names, of which a large number are identical to or confusingly similar to trademarks in use by trademark owners prior to the registration date of the domain names. The Complainant asserted that the Registrant had engaged in a pattern of registering domain names in order to prevent trademark owners from registering their marks as domain names.

Until at least September 25, 2014, the website available at optrex.ca was a “pay per click” site with links to various other sites related to eye care. The links resolved to websites unrelated to the Registrant. Although the site was modified after the CDRP complaint had been filed to one purporting to sell OPTREX branded products, the panel concluded that the change in content did not demonstrate a legitimate interest in the OPTREX trademark.

However, in its decision, the panel noted that as few as two domain name registrations is sufficient to establish that a registrant has engaged in a pattern of registering domain names in bad faith. The Registrant and its sole director had been the subject of numerous CDRP proceedings in which they had been found to have registered domain names in bad faith, and they currently own thousands of domain name registrations for .ca domain names, a large number of which incorporate famous trademarks, including dolceandgabanna.ca and thenewyorktimes.ca.

The panel concluded that the Complainant met its burden and demonstrated on a balance of probabilities that:

  1. The domain name in issue is confusingly similar to the trademark in which the Complainant has rights;

  2. The Registrant has no legitimate interest in respect of the domain name; and

  3. The Registrant registered the domain name in bad faith.

As a result, the domain name was transferred to the Complainant.

Canadian brand owners should ensure that they register their trademarks as well as the corresponding .ca domain names. In the event they have not done so and the .ca domain name corresponding to their trademark has been registered, CDRP proceedings should be considered as a cost effective and efficient way to protect and enforce trademark rights in Canada.


Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association