First created in 1987, the .ca domain name space has grown to include over 635,000 .ca domain names. Although the Canadian Internet Registration Authority (“CIRA”) established its Domain Name Dispute Resolution Policy (the “Policy”) in 2001, there have only been 51 dispute resolution decisions to date. This number is considerably lower than the number of proceedings brought under ICANN’s corresponding Uniform Domain Name Resolution Policy (“UDRP”).
Consistent with CIRA’s policy of reserving .ca domain names for Canadians, a Complainant under the Policy must first meet the Canadian presence requirements for registering a .ca domain before it can initiate a dispute. This usually requires a foreign entity to have a Canadian incorporated subsidiary or a Canadian trademark registration for the .ca domain name. Complainants holding only pending Canadian applications are not eligible.
In order to succeed in a dispute, a Complainant must prove that:
(a) 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;
(b) the Registrant has no legitimate interest in the .ca domain name; and
(c) the Registrant has registered the .ca domain name in bad faith.
Several difficulties arise with the bad faith requirement. The Policy considers a Registrant to have registered a domain name in bad faith if:
(a) the Registrant registered the domain name primarily for the purpose of selling, renting, licensing or otherwise transferring the Registration to the Complainant for valuable consideration in excess of the Registrant’s actual costs in registering the domain name;
(b) the Registrant registered the domain name in order to prevent the Complainant from registering one of the Complainant’s marks as a domain name, provided that the Registrant has engaged in a pattern of such conduct; or
(c) the Registrant registered the domain name primarily for the purpose of disrupting the business of the Complainant, who is a competitor of the Registrant.
It can be difficult for a Complainant to satisfy the bad faith requirement when dealing with sophisticated cybersquatters. The main reason for this is that unlike the UDRP, the categories of bad faith are restricted to those listed above. Novel arguments related to bad faith are almost always rejected by CIRA arbitration panels.
Cybersquatters with knowledge of the Policy will not typically initiate an offer to sell the domain name for a fixed price, but instead will sit back and wait for a trademark owner to make an offer. A knowledgeable cybersquatter can also register multiple domain names so that it is difficult to prove a pattern of conduct. However, with a proper investigation, a trademark owner may be able to make a connection between the different names used by a cybersquatter, and thereby prove the requisite pattern of conduct. Finally, a cybersquatter is unlikely to be a competitor of a trademark owner, and therefore the third requirement of bad faith can be difficult to apply.
The costs of initiating a CIRA dispute are quite high compared to a UDRP proceeding. The arbitrator’s fees alone for a three person panel are over $4,000. For a trademark owner, a payment of a few thousand dollars to a cybersquatter may represent a significantly lower cost than that of a CIRA dispute.
Given the difficulties of dealing with cybersquatters under the Policy, it is highly recommended that trademark owners, and especially trademark owners outside of Canada, take proactive steps to register their trademarks as .ca domain names.
Timothy P. Lo, Vancouver