Canada is often considered an attractive market for international brand owners seeking to expand their online business activities. With such expansion, there is a common desire among brand owners to signal a clear intention to service Canadians and, specifically, to target Canadian online consumers. This generally involves an interest in the country code top-level domain .ca, which may be presumed to be a simple and straightforward registration. With the Canadian market a popular and even obvious target for many international brands, there is often the assumption that the Canadian domain name system is closely analogous to other systems, including more prevalent top-level domain systems.
In reality, Canada has a unique and nuanced domain name system which presents at times unexpected intricacies and complexities to foreign companies seeking to acquire and enforce domain name rights in Canada.
Eligibility Requirements: Domain Name Acquisition
On the most immediate level, brand owners seeking to secure a .ca domain name must first meet the strict rules of the Canadian Internet Registration Authority (CIRA) governing eligibility to own a .ca domain name in the form of the Canadian Presence Requirements (CPRs).
While Canadian individuals and entities can register any available .ca domain name without needing to demonstrate prior rights or legitimate interest, the CPRs restrict ownership by non-Canadians to .ca domain names which consist of or include the exact word component of a Canadian trademark registration owned by the registrant. Since Canadian trademark registrations generally take at least 18 months to issue, there can be a significant delay from the time that steps are taken to protect rights in Canada and the time at which a non-Canadian can register a .ca domain name. Moreover, since the CPRs restrict ownership by non-Canadians to domain names including the exact word component of a registered Canadian mark, even with a trademark registration, there continues to be restrictions as to which .ca domain names can be acquired. For example, domain names comprising variations, short forms, or common misspellings of a registered mark are all prohibited.
As a result of the CPRs, many non-Canadian entities simply do not satisfy the test for .ca ownership. Non-Canadian entities thwarted from registering a .ca domain name as a result of these restrictions, sometimes to their surprise, should not expect it will be possible to overcome these hurdles by simply selecting or paying a Canadian third-party agent to register the .ca domain name on its behalf. CIRA has additional registrant rules that clearly prohibit the use of such proxy registrations to meet registrant eligibility requirements, and it conducts regular and thorough audits of .ca registrations by foreign entities to ensure legitimate compliance with CPRs.
CDRP vs. UDRP
These potential obstacles to registration can result in a scenario in which a non-Canadian entity seeking to register a .ca extension finds that an eligible owner has already swooped in and registered the .ca domain name of interest, or one that interferes with the foreign entity’s business. When brand owners find themselves in this unfortunate situation, they may consider recourse pursuant to CIRA’s Dispute Resolution Policy (CDRP).
Here again, there is an understandable assumption that the CDRP can be interpreted and applied based on familiarity with the better known and widely used Uniform Domain-Name Dispute-Resolution Policy (UDRP). To be sure, the CDRP and UDRP share many similarities, and their respective three-part test used to decide each case appear, on its face, essentially the same:
|Three- Part Test
The registrant’s .ca domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration of the domain name and continues to have such rights;
The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
|Criteria 2: Legitimate Interest
|the registrant has no legitimate interest in the domain name as described in
paragraph 3.4; and
|there are no rights or legitimate interests with respect to the domain name; and
Criteria 3: Bad Faith
|the registrant has registered the domain name in bad faith as described in paragraph 3.5.
||the domain name has been registered and is being used in bad faith.
As the above illustrates, in both the CDRP and UDRP, a dispute is decided based on the same three criteria—and the complainant under either policy should succeed where it shows that it has rights in a confusingly similar mark, the registrant does not have a legitimate interest in the domain name, and the domain name was registered in bad faith.
However, once unpacked, these respective tests, and the process by which a party can avail itself of each proceeding, differ in important and influential ways.
Eligibility Requirements: Domain Name Enforcement
First, while non-Canadian entities are certainly not precluded from pursuing recourse under the CDRP, they face strict eligibility requirements here as well, defined in the CDRP as follows:
Eligible Complainants. The person initiating a Proceeding (the “Complainant”) must, at the time of submitting a complaint (the “Complaint”), satisfy the Canadian Presence Requirements for Registrants in respect of the domain name that is the subject of the Proceeding unless the Complaint relates to a trademark registered in the Canadian Intellectual Property Office (“CIPO”) and the Complainant is the owner of the trade-mark.
As this wording indicates, the eligibility requirements to commence a CDRP are in fact more lenient than the CPRs relating to ownership of a .ca domain name discussed above. Non-Canadian entities have room to challenge a .ca domain that “relates” to a Canadian trademark registration that they own and not just one that comprises or includes the exact word component of their Canadian trademark registration
. The slightly broader scope afforded by this wording appears to encompass .ca domain names comprising a misspelling, minor variant, or other small typographic error relating to a Canadian registered trademark. However, potential complainants should be cautious since it is unclear to what extent the domain name must relate
to the registered trademark, as there are no set criteria for determining whether the domain name and registered Canadian trademark are sufficiently related to qualify.
Additional Nuances of the CDRP
Assuming that eligibility requirements to commence a CDRP can be satisfied, a complainant under the CDRP could face additional challenges to succeed in a dispute which may not be entirely apparent upon an interpretation of the three-part test that wholly relies on its similarities with the UDRP test.
The first branch of the CDRP test contains two criteria not present in the corresponding first branch of the UDRP test. While both policies require the complainant to have rights to a confusingly similar mark, the CDRP explicitly requires that these rights predate the registration date of the contested domain name. Moreover, the CDRP contains a definition for a mark, which is limited to registered and unregistered rights in Canada.
Put simply, the complainant must establish prior rights in Canada to a confusingly similar mark to satisfy the first branch of the CDRP test. The UDRP, on the other hand, contains no such territorial restriction on the complainant’s ability to establish rights in a mark, nor does it require that these rights necessarily predate the date of the contested domain name registration (though, practically, there can be obvious challenges in establishing “bad faith” on the part of the registrant if it did not own earlier rights, despite scenarios where this may very well be the case).
As such, under the CDRP, in the absence of earlier registered rights in Canada, the complainant will need to rely on Canadian common law rights that predate the registration of the domain name. It can be difficult for any complainant—but in particular, non-Canadian complainants—to establish Canadian common law rights through use, even where the brand has achieved significant reputation elsewhere. The analysis of common law rights is fact based and dependent upon the evidence of use and reputation adduced, which can make the preparation of a persuasive CDRP based on common law rights an involved process.
For example, in the CDRP case Guitar Center, Inc v. Pipemi
, 2014, DCA 1570-CIRA, the panel held that the U.S.-based complainant established common law use of its mark GUITAR CENTER in Canada on the basis of evidence showing that:
- It operated numerous retail locations, including many within 100 miles of the Canadian border;
- Canadians regularly visited these locations; and
- The complainant operated a “.com” website accessible to Canadians.
Conversely, in the CDRP decision of AOL Canada Inc. v. Anderson and Grouse
, 2010, DCA-1246-CIRA, the panel held that the complainant did not show sufficient use of the website luxist.com by Canadians prior to registration of the contested domain name “luxist.ca” to establish earlier rights in Canada—despite finding that the respondent in the dispute was likely sufficiently aware of the complainant’s LUXIST mark and brand to infer that the contested domain name was registered in bad faith. Accordingly, even strong brands primarily operating outside of Canada or entirely online may be surprised to find challenges in establishing prior common law rights in Canada in the context of a CDRP.
To establish earlier rights in Canada, foreign entities have had to consider all options, in some cases relying on a related Canadian corporation to satisfy the eligibility requirements and/or establish earlier rights in Canada. Indeed, the CDRP provides that a complainant can rely on acquired or licensed rights to establish prior rights. It should be noted, however, that CDRP panels have taken a conservative view when complainants rely on marks that have been licensed or acquired from a non-Canadian owner and have challenged the complainant’s alleged prior common law rights, particularly where it appears that the complainant entity was established and the trademark rights transferred solely for the purpose of meeting CDRP eligibility requirements. For example, in Asos Canada Services Ltd v. Nexon Media Inc.
, (2013), 110 CPR (4th) 386, the panel held as follows:
Nor is it correct that the subsequent incorporation in Canada of the Complainant somehow created a retroactive right to claim a right in the .ca domain name. . . .The Complainant’s incorporation in Canada and subsequent transfers of the rights to the common law trademark . . . might be interpreted as an attempt to get around a material precondition of the CPR.
Similarly, in Ebates Canada Inc v. Cranhill
, (2012), 103 CPR (4th) 398, it was held as follows:
Did the Complainant have rights prior to the date of registration of the domain name? . . . The Complainant relies upon a license from its parent company to back date its rights. The Complainant’s license from its parent company does not endow it with an earlier date of incorporation. It cannot meet the test set out in 4.1(a) of the Policy. To find otherwise would allow an ineligible complainant to proceed by proxy.
These above decisions support the position that common law rights acquired by the complainant from a foreign entity after the date of the contested domain name registration are not a valid basis on which to establish prior rights.
Similarities with Differences
Notwithstanding the technical and evidentiary issues that can be at play in a CDRP, not all components of the CDRP are more stringent compared to its UDRP counterpart. Specifically, while both policies require the complainant to show that the domain name was registered in bad faith, the UDRP also requires that the domain name currently be “used” by the registrant in bad faith. This creates a two-part analysis of bad faith which does not exist in the CDRP. While the registrant’s current use can be (and often is) used by a complainant in a CDRP to infer its bad faith intention at the date of registration, it is not necessary that the current use itself evidence bad faith. Accordingly, where a domain name can be shown to have been registered in bad faith but used in connection with a website where bad faith is not apparent, it may still be possible for a complainant to succeed in a CDRP. It would seem that this distinction may help to favor CDRP complainants dealing with sophisticated registrants who are savvy enough to modify their use to avoid a clear demonstration of bad faith.
While familiarity with the UDRP will no doubt be useful when navigating the Canadian domain name system, Canada’s own unique sets of rules and procedures for acquisition and enforcement should be considered carefully, and in their own right.
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. Law & Practice updates are published without comment from INTA except where it has taken an official position.
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