What’s In A Name? Disputing The Registration Of A .ca Name – Intellectual Property

In a digital age, having an online presence has become critical
to the success of a business. Having a straightforward,
easy-to-find domain name can be key. If the ideal domain name for
your organization is already taken, it may be possible to retrieve
it.

Please note: The information in this blog post is
specific to .ca domain names. We will be discussing .com names in
an upcoming post.

Challenging a Domain Name

When an ideal domain name is taken, there are a few options
available to your organization. Two key options are to negotiate
with the current domain name holder to buy the name or to dispute
the domain name through legal means such as the Canadian Internet
Registration Authority’s (“CIRA”) Dispute Resolution
Process.

Grounds to Challenge

A domain name cannot be disputed simply because the current
domain name holder does not want to sell it to your organization.
For a complaint to CIRA to be successful, each of
the following requirements must be met:

1. Earlier Rights to a Trademark: Your organization
must have rights to a “mark” similar to the domain name,
or a confusingly similar name that pre-dates the acquisition of the
domain name. The mark can be either a registered trademark or
common law trademark. This can apply even if the domain name is not
quite the same as the name you have rights to, but is similar and
is being used for fraudulent purposes.

2. Registered in Bad Faith: The name must be registered
in bad faith. Demonstration of registration in bad faith includes
domain names registered:

• For the purpose of selling, renting, licensing or transferring
  the name for value beyond the costs of registration;




• To prevent a mark owner from registering the domain name;




• As part of a pattern of registering names to disrupt a mark
  owner’s business; or




• To attract users for financial gain by creating confusion with
  the name.

3. Evidence of No Legitimate Interest: There must be
evidence that the name holder has no legitimate interest in the
domain name. The domain holder can show legitimate interest in good
faith if it:

• Is a mark the domain name holder had rights in;




• Was registered in association with its wares, services, or
  business;




• Is associated with a non-commercial activity of the domain
  holder;




• Is a legal name or was a name the domain name holder is
  commonly identified by; or




• Is the geographical name of the domain name holder’s place
  of business.

Both the first and second requirements must be met, and at
minimum, some evidence of the third requirement must be shown for a
domain dispute to succeed.

Last, it may be possible to dispute a domain name where the
Canadian residency requirements are not met, as the agreement domain name holders
enter into when registering a name requires that the registrant meet Canadian presence
requirements. If your organization has reason to doubt that the
domain name holder meets the residency requirements, you may also
be able to dispute it on this basis.

Takeaways and Lessons for Organizations

There are a few options for your organization to retrieve a .ca
domain name, and the best option will depend on the
circumstances.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.