Timing Is Crucial in CIRA Domain Name Disputes
CIRA, the Canadian Internet Registration Authority, manages the registration of domain names ending in “ca”. It has created a set of rules and procedures, called the Canadian Dispute Resolution Process (or CDRP), for resolving some of the disputes that arise over domain names, particularly cybersquatting. Everyone who registers a dot-CA domain name agrees to abide by CIRA’s rules and procedures.
In a couple of recent dot-CA domain name disputes, the outcome has turned on the timing of the formation of the party complaining about a domain name. It is important that before bringing a domain name dispute that you investigate the timeline of your client’s activities and determine its rights at the relevant times.
To be successful in a domain name dispute under the CDRP, a complainant must show:
- the domain name is confusingly similar to a ‘mark’, such as trademark, in which the complainant had rights prior to the date of the registration of the domain name;
- the registrant of the domain name has no legitimate interest in the domain name; and
- the registrant registered the domain name in bad faith.
The specific requirements of these three tests are set out in more detail in the dispute resolution policy and as applied by various panels. I would like to focus on timing requirements under the policy.
The complainant must show it had rights in the mark “prior to” the date of registration. In a typical scenario, the complainant has a registered trade-mark in Canada, and the registrant registers a domain name that is identical to the trade-mark after the trade-mark has been used and become known in Canada. In such a case the complainant clearly has rights prior to the date of registration. In about 75% of CIRA domain name disputes over the last couple of years, the domain is transferred to the complainant.
In two recent disputes, the facts were not so clear.
In a decision relating to <asos.ca> (CDRP #219), the domain name was registered in 2009. The complainant, Asos Canada Services Limited, was not incorporated until 2012. The Asos Canada relied on unregistered common law rights in the mark ASOS held by a predecessor in title, Asos PLC that were transferred to Asos Canada in an assignment soon after formation.
The complainant successfully showed that the ASOS mark was used in Canada as a common law trademark prior to the date of the registration. Asos PLC had been formed in 2000 and had established substantial goodwill as an online fashion and beauty retailer with customers and sales in Canada.
Even with these facts, panel went on to determine that Asos PLC could not have registered the domain name prior to the date the domain name was actually registered because it failed to meet the Canadian Presence Requirements at the required time. According to the panel, the Canadian Presence Requirements is “explicitly meant to restrict the .ca domain name regime to parties with a specific Canadian connection”. The complaint was denied and the domain name was not transferred.
In the <arcelorMittal.ca> decision (CDRP #221), decided in February, a complaint was brought by ArcelorMittal SA, an entity legally formed in 2007 through the merger of Arcelor and Mittal. The domain name was registered by a third party the day after the merger of the companies and the new name were announced in 2006.
The panel found that Arcelor and Mittal each had rights in their respective names in Canada, including through registered trade-marks pre-dating the registration of the domain name. Since the merged entity is the successor to the rights of the predecessor companies, the panel found that the complainant had rights in the name prior to the date of registration even though it did not formally exist and had not actually used the mark in Canada. After considering the other factors, the panel ordered that the <arcelormittal.ca> domain name be transferred.
These decisions show the importance of establishing rights in the mark in Canada prior to the registration date in order to be successful in the domain name dispute process. Such evidence should include Canadian trade-mark registrations or evidence of use in Canada of common law marks along with a connection to Canada enough to establish the Canadian Presences Requirements under the rules.
Do you think the Asos decision was fair to the complainant, whether or not it was right according to the CIRA rules?
Whether the decision is considered ‘fair’ likely depends on your views of the Canadian Presence Requirements. To register a dot-ca domain name, you need to have a sufficient connection to Canada and under the policy unregistered “common law” trademark rights are not considered enough of a connection. If Asos had been decided in favour of the complainant, it would have allowed Asos to reach back in time based on its later ‘presence’ in Canada.