|Dot-CA Dispute Mechanism: CIRA Domain Name Dispute Resolution Policy
By Eric Macramalla
In November 2001, CIRA, the body mandated to govern the dot-ca space, implemented the CIRA Domain Name Dispute Resolution Policy ("CDRP"), which addresses instances of bad faith registration in the dot-ca space. Registrants must submit to a Complaint pursuant to the CDRP if an aggrieved trade-mark owner elects to challenge a dot-ca domain name registration. Disputes are also governed by the CIRA Dispute Resolution Rules ("CDRR").
Who is Eligible to File a CDRP Complaint?
A complainant trade-mark owner ("Complainant") initiating a proceeding must, at the time of submitting a Complaint, satisfy one of the Canadian Presence Requirements as set out in the CIRA Policies, Rules, and Procedures - General Registration Rules, which sets out various citizenship, residency, ownership, location and membership requirements, all of which require a connection with Canada. A Canadian citizen, a permanent resident of Canada ordinarily resident in Canada, and a Canadian corporation are among those that qualify for a dot-ca domain name registration.
If it does not satisfy any of these requirements, a Complainant is nevertheless permitted to rely upon a Canadian trade-mark registration that is confusingly similar to the disputed domain name. Note that an application or prior common law rights is insufficient to confer eligibility. However, if successful, the trade-mark owner would have to transfer the domain name to a Nominee who satisfies a Canadian Presence Requirement.
It is somewhat curious that a trade-mark owner may move against a domain name it is not qualified to register.
A more practical approach would be to allow a foreign trade-mark owner to file a complaint if it is the owner of corresponding trade-mark rights - be it registered or at common law. The onus would of course be on the trade-mark owner to show that it has acquired trade-mark rights. Interestingly, when relying on a trade-mark that has matured to registration after the domain name registration date, parties (whether Canadian or otherwise) must show that they own common law trade-mark rights that precede the domain name registration date. It is curious that a foreign trade-mark owner is permitted to rely on common law rights if it owns a registration. Somehow a trade-mark registration legitimizes common law rights of non-Canadian parties.
Getting the Complaint Process Started
The Complaint procedure is intended to be expeditious, taking between 60 to 90 days from the time a Complaint is filed to the day a decision is rendered.
A Complaint is submitted to the Dispute Resolution Service Provider ("Provider") of the Complainant's choosing. Currently, there are two Providers - the British Columbia International Commercial Arbitration Centre ("BCICAC"), and Resolution Canada Inc.
Once the Provider receives the Complaint from the complainant trade-mark owner, it has 3 days to determine whether it is in compliance with the CDRP and CDRR. If deemed compliant, the Complaint is then forwarded to the Registrant, who is then provided with 20 days to respond, subject to an extension of time. An extension of time is only available if the Registrant can demonstrate exceptional reasons for the delay, or if the parties agree in writing to the extension.
Once the Provider is satisfied that the Registrant's Response complies with the CDRP and CDRR, it nominates a three-member Panel in keeping with the nominations received by both parties.
If a response is not filed by the Registrant, the Complainant is provided the option of converting the three-member Panel to a less costly single-member Panel. The Panelist is chosen by the Provider. In such cases, the Panel bases its decision solely on the submissions of the Complainant. Decisions are provided within 21 days of the appointment of the Panel, or within 28 days if the proceeding is conducted in two languages. Unlike the UDRP, the cost of the Panel is entirely borne by the Complainant.