Canada’s Intellectual Property Firm

IP Update

CIRA announces revised CDRP Policy and Rules to take effect on August 22, 2011

As reported in the March/April 2011 issue of Canadian ReMARKS, the Canadian Internet Registration Authority ("CIRA") published a series of proposed changes to the CIRA Domain Name Dispute Resolution Policy ("CDRP"), and sought public input. Based on all the responses received, CIRA has now announced the implementation of a revised CDRP Policy and Rules, which will take effect on August 22, 2011. A list of all the elements of the CDRP under consideration that changed or did not change is available here.

The most significant provisions revised by CIRA are as follows:

  • CIRA has removed the definitions of "rights" and "use" from the CDRP Policy. This is expected to expand the means of establishing trademark rights to include "making known" in Canada.
  • The "bad faith" and "legitimate interest" factors are now non-exhaustive, where they had previously consisted of a list of enumerated grounds.
  • The implementation period for CDRP decisions has been shortened from 60 days to 30 days.
  • Filing of complaint and response submissions will change from mandatory paper filing to mandatory electronic filing, with a one-year phase in period.
  • Only the filing fee ($1,000) is now required to initiate a complaint. The panel fee ($3,000 for a three-member panel, $1,750 for a one-member panel) is only required to be paid by the complainant if a decision is required.

The most significant provisions that CIRA declined to revise are as follows:

  • Complainants must continue to meet CIRA's Canadian presence requirements in order to file a complaint.
  • There is no change to the requirement of a mandatory three-member panel, with the option of a one-member panel if the registrant does not file a response.
  • CIRA has maintained the requirement that the complainant has rights in the mark prior to registration of the domain name.
  • CIRA elected not to make any changes to the available remedies, fees, form of complaint and response.
  • CIRA elected not to introduce any mediation or appeal procedures.

Please contact us if you have any questions regarding CDRP proceedings or the revised CDRP Policy and Rules.