Procedure for ‘.ca’ disputes to be more consistent with UDRP

Canada
Following last year’s public consultation, the Canadian Internet Registration Authority (CIRA), the organisation in charge of the Domain Name Resolution Policy for '.ca' domain names, has announced new changes to the policy, called the CDRP. CIRA will change the CDRP to be more consistent with the Uniform Domain Name Dispute Resolution Policy (UDRP) that governs top-level domain name disputes, among other improvements.

Some of the proposed changes are highlighted below:
  • Transfers and settlement - the implementation period after a successful CDRP proceeding will be reduced to 30 days (from 60 days). This is still longer than the 10 days for UDRP actions. Moreover, if the parties want to settle while a case is pending, CIRA will permit the domain name to be transferred to the complainant. Previously, a pending CDRP case locked the domain name and prevented such transfers until the case was decided.
  • Expansion of bad faith factors - as currently drafted, the CDRP contains a closed list of circumstances that would constitute bad faith (registration in bad faith is one of the three requirements of a successful CDRP complaint). The new CDRP will make this list open-ended. Moreover, borrowing again from the UDRP, use of a domain name for commercial gain will be added to the list of examples of bad faith.
  • Expansion of legitimate interest factors - a domain name registration without any legitimate interest is another of the three requirements of a successful CDRP complaint. The new CDRP will make the list of legitimate interest factors open-ended as well. Having such non-exhaustive lists will make the new CDRP more consistent with the UDRP. A related change to the legitimate interest section will eliminate the requirement for a registrant to “use” a generic or descriptive domain name.
  • Confusing similarity will be a narrow test - to ensure that all panels of decision makers use the same test in comparing the domain name with the complainant’s trademark, the new CDRP will use a “narrow resemblance” test, rather than the broader traditional test for confusion in trademark law. Whether a domain name is “confusingly similar” to a mark is the last of the three requirements of a successful CDRP complaint. Furthermore, the new CDRP will no longer narrowly prescribe what “rights” or “use” of a mark is required to qualify for protection.
  • Miscellaneous - CIRA will permit electronic filing and make past cases searchable on its website.
Finally, CIRA has asked for additional comments on changes to its fee structure - for example, CIRA is considering staging fees so that a complaint can be initiated with payment of a modest fee only, with the balance of the fee due upon the filing of a response.

Overall, it would appear that these changes balance the interests of domain holders (including cybersquatters) and brand owners. One clear improvement is the closer alignment of the CDRP to the UDRP, which offers a large body of helpful jurisprudence regarding bad faith and legitimate interest factors. Having these open-ended factors will reduce the certainty of outcomes in particular cases, but it should help the CDRP stay relevant through technology and marketplace evolutions.

Yuri Chumak, Cameron MacKendrick LLP, Toronto

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