'.ca' domain name decision illustrates useful tool for demonstrating bad faith
The recent decision in Optrex Limited v Nameshield Inc under the CIRA Domain Name Dispute Resolution Policy (CDRP) provides a useful reminder that '.ca' domain names registered in bad faith are subject to transfer by way of a process similar to a proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP). The decision also illustrates useful tools for brand owners which are unique to CDRP proceedings.
Canada’s '.ca' domain name registry is restricted to registrants who meet the Canadian presence requirements, which generally requires that the registrant own a relevant Canadian trademark registration or be a Canadian legal entity.
The '.ca' registry provides for a relatively quick and inexpensive dispute resolution process to address bad-faith domain name registrations, under the CDRP. The CDRP is modelled after the UDRP and requires a complainant to establish three basic elements:
- the domain name is confusingly similar to a trademark in which the complainant has rights;
- the domain name was registered in bad faith; and
- the registrant has no legitimate interest in the domain name.
Only parties who meet the Canadian presence requirements have standing to file a complaint under the CDRP.
The domain in issue was 'optrex.ca', which was registered on October 23 2012. The registrant was Nameshield Inc, a corporate entity based in Prince Edward Island. The sole director of Nameshield Inc, and the contact person identified for the domain, was an individual named Daniel Mullen.
The complainant was Optrex Limited, a subsidiary of Reckitt Benckiser, which manufactures and sells eye care products, such as moisturising eye drops and eye wash solutions. The complainant owns Canadian registration UCA9890 for the trademark OPTREX in association with eye care products, which was registered in 1937 and had been used in Canada since 1932.
Prior to the complaint being filed, the domain was being operated as a 'pay-per-click' website with an aggregation of hyperlinks to various other websites related to, among other things, eye drops and eye washes sold by third parties.
With respect to whether the domain 'optrex.ca' was confusingly similar to the complainant’s trademark, this was not in dispute as the domain was identical to the complainant’s registered trademark (under the CDRP, the '.ca' suffix alone is not considered to be a distinguishing feature).
Under the CDRP, one means by which a complainant can demonstrate bad faith on the part of the registrant is if the registrant has previously engaged in a pattern of registering domains corresponding to established trademarks. Notably, CIRA provides a service whereby complainants, on request and free of charge, can obtain a comprehensive list of all '.ca' domains which are owned by the registrant of a domain name that may become the subject of a CDRP proceeding.
In the present case, the complainant used this service to identify 4,664 '.ca' domain names owned by Nameshield or its sole director. A significant number of these domains corresponded to well-known trademarks owned by third parties, such as 'dolceandgabbana.ca', 'majorleaguesoccer.ca' and 'thenewyorktimes.ca'. The registrant and its director were also the subject of numerous previous CDRP and UDRP proceedings in which they were found to have registered domains in bad faith. Based in part on these facts, the panel concluded that the 'optrex.ca' domain had also been registered in bad faith.
In an apparent attempt to demonstrate a legitimate interest in the domain, the registrant modified the content of the website from a pay-per-click site to one purporting to sell Optrex brand LCD displays. However, the registrant made this change to the site after the complaint had been filed. Consequently, the panel concluded that this change in content did not demonstrate a legitimate interest in the domain.
This aspect of the decision may be of assistance to brand owners if cybersquatters modify the content of a website in an attempt to demonstrate a legitimate interest, either after first contact by the brand owner or after a proceeding has been started. It also illustrates the need for brand owners to ensure that evidence of infringing or bad-faith content on websites is recorded when first discovered, for later use as evidence in the event that the website content changes.
Overall, the decision is a useful reminder of the option of CDRP proceedings as a means of recovering '.ca' domains registered in bad faith. In addition, the decision showcases one of the tools which is unique to the Canadian context and which can be useful in demonstrating bad faith - namely, the ability to obtain a list of all other '.ca' domains owned by the registrant in question. Finally, the decision may be of assistance to brand owners in future cases in which a registrant modifies the content of the website in an attempt to suggest a legitimate interest in the domain.
Timothy O Stevenson, Smart & Biggar/Fetherstonhaugh, Ottawa
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