|Substantive Elements of the CIRA Dispute Resolution Policy
By Eric Macramalla
The CIRA Domain Name Dispute Resolution Policy ("CDRP") sets out three (3) factors a complainant trade-mark owner ("Complainant") must satisfy in order to secure the transfer of a disputed domain name. In particular, the Complainant must show as follows:
(1) the disputed domain name is confusingly similar to a mark in which the Complainant had rights prior to the date of registration of the domain name, and continues to have such rights;
(2) the Registrant registered the domain name in bad faith; and
(3) the Registrant does not have a legitimate interest in the domain name.
If a Complainant proves the first and second elements, the Registrant may nevertheless succeed in a proceeding if it proves, on a balance of probabilities, that it has a legitimate interest in the domain name.
1. Confusingly Similar
Under the CDRP, the Complainant must establish that the subject domain name is "confusingly similar" to a "mark" in which the Complainant had "rights" prior to the date of registration and continues to have such "rights". This test can be broken down into two parts: marks/rights and confusingly similar.
Mark & Rights
A Mark is defined as a registered trade-mark, a common law trade-mark, a trade name, an Official mark or a certification mark.
A Complainant must establish that its rights precede the domain name registration date. If the Complainant's mark has matured to registration prior to the domain name registration date, prior rights are presumed. However, if the trade-mark matured to registration after the domain name registration date, or the Complainant is relying on common law rights, it must then establish rights by virtue of use that predates the domain name registration (i.e., the mark was used in Canada by the Complainant for the purpose of distinguishing its wares, services or business prior to the domain name registration date).
A non-Canadian party only qualifies to file a Complaint if it is the owner of a trade-mark registration that is confusing with the disputed domain name. If it is the owner of common law rights only, it cannot file a Complaint. Interestingly, a non-Canadian party may rely on a trade-mark registration that matured to registration after the domain name registration date, and then turn to its prior common law rights to establish prior rights.
This means that a trade-mark owner that announces the launch of a product, and becomes the target of a squatter before it has actually commenced use of the mark in the marketplace, is in hot water. The Uniform Dispute Resolution Policy ("UDRP") does not perse require prior rights; this issue is considered when examining the issue of bad faith.
A domain name is "confusingly similar" to a mark if the domain name so nearly resembles the mark in appearance, sound or in the ideas suggested by the mark so as to be likely to be mistaken for the mark.
There has been some inconsistency in the decisions rendered to date with respect to what is meant by "confusingly similar". Some Panels have held that the test is one of resemblance, based upon first impression and imperfect recollection, while other Panels have concluded that it is the same test of confusion that is applied in cases of trade-mark infringement under the Trade-marks Act or passing off at Canadian common law. Recent case law has confirmed that the correct test to be applied is one of resemblance. This test is similar to the test for source confusion set out in subsection 6(5) of the Canadian Trade-marks Act , namely, "the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them", while excluding the remaining criteria.
2. Bad Faith Registration
Unlike the UDRP, which provides a non-exhaustive list of bad faith factors, the indicia of bad faith registration provided for under the CDRP are exhaustive. A Registrant will be considered to have registered a domain name in bad faith if, and only if, the Complainant can demonstrate one of the following factors:
(a) the Registrant registered the domain name, or acquired the Registration, primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the Complainant, or the Complainant's licensor or licensee of the mark, or to a competitor of the Complainant or the licensee or licensor for valuable consideration in excess of the Registrant's actual costs in registering the domain name, or acquiring the registration;
(b) the Registrant registered the domain name or acquired the registration in order to prevent the Complainant, or the Complainant's licensor or licensee of the mark, from registering the Mark as a domain name, provided that the Registrant, alone or in concert with one or more additional persons has engaged in a pattern of registering domain names in order to prevent persons who have rights in marks from registering the marks as domain names; or
(c) the Registrant registered the domain name or acquired the registration primarily for the purpose of disrupting the business of the Complainant, or the Complainant's licensor or licensee of the mark, who is a competitor of the Registrant.
(a) Acquired Domain Name to Sell for a Profit
This bad faith factor captures the classic cybersquatting case, where a Registrant has purchased a domain name primarily with the intent of selling it for an amount exceeding its out-of-pocket expenses. Under the CDRP, as with the UDRP, an express offer to sell need not be made for a finding of bad faith to be made.
(b) Pattern of Abusive Registrations
Bad faith registration will be established if the Complainant can show that the Registrant has engaged in a pattern of registering domain names that incorporate the marks of third parties to which it has no entitlement. Although the term "pattern" is not defined under the CDRP, it has been held that as few as two domain name registrations may be sufficient to establish a pattern of bad faith registration, a holding which is consistent with the UDRP case law.
(c) Disrupting A Competitor
The CDRP does not define "competitor". As with the UDRP, two definitions have been considered. The narrow definition of competitor holds that a "competitor" is one who offers goods and services that compete with, or rival, the goods or services offered by the trade-mark owner. The broad interpretation holds that a competitor is someone who simply acts in opposition to another, including competing for the attention of Internet users, which does not require that the Registrant be a commercial business competitor, or that the parties sell competing products. CDRP Panelists have opted for the narrower interpretation in the majority of cases, although the broader definition has been relied upon as well.
3. Legitimate Interest
The CDRP contains explicit provisions protecting good faith commercial use of domain names, good faith non-commercial use of domain names, such as websites engaged in legitimate critical commentary, good faith use of generic or descriptive domain names, and domain names that refer to a person's name or to a geographical location. If the Registrant demonstrates a legitimate interest in a domain name, it is entitled to retain the domain name even if the Complainant has proven confusion and bad faith registration.