Top 5 tips for non-Canadian brand owners seeking to protect trademarks as domain names in Canada
November 6, 2013

by Daniel Anthony

Canada’s top level domain name registry (.ca) is a restricted access registry with local presence requirements, a stand alone domain name arbitration process and a unique privacy policy. The .ca registry is well regarded by Canadians, and .ca domain names generally indicate to consumers that the products and services are available in Canada. The following five tips will help brand owners navigate the particular requirements of the .ca registry.

1. Know the Canadian Presence Requirements: All .ca domain names registrants must meet at least one of the 18 Canadian Presence Requirements (CPRs). The most commonly used CPRs for non-Canadian brand owners are: (i) corresponding Canadian trademark registration, (ii) Canadian corporate status, and (iii) Canadian citizenship/residency. The Canadian Internet Registration Authority conducts compliance audits to identify and cancel .ca domain names that fail to meet the Canadian Presence Requirements.

Brand owners should be aware that the CPRs cannot be met by a pending Canadian trademark application, and that Canadian cybersquatters are eligible to register domain names that correspond to pending trademark applications, while non-Canadian brand owners are forced to wait for the trademark registration to issue. The CPRs also cannot be met by unregistered trademark use in Canada or trademark reputation acquired in Canada.

One means of meeting the CPRs through Canadian corporate status is to identify a related Canadian federal or provincial corporation, such as a Canadian subsidiary. If an appropriate Canadian corporation does not exist, it may be practical to incorporate a shell company to hold .ca domains.

2. Use proxies with caution: A common question is whether a non-Canadian brand owner can simply use a proxy (i.e. an unrelated third party) to hold the domain name on the brand owner’s behalf. While some companies offer this service, the .ca Registration Agreement explicitly prohibits proxy arrangements to circumvent the CPRs. Therefore, domain names registered through a proxy to avoid the CPRs may be vulnerable to cancellation if challenged or if subject to a compliance audit.

3. Select domain names to register: It is generally much less expensive to proactively register valuable domain names than to recover domain names registered in bad faith. Assuming the CPRs can be met, brand owners should consider the benefits of registering the following as .ca domain names: company names, trademarks, .ca versions of existing domain names in other registries, alternate or common misspellings (e.g. centre vs. center), and French/English language equivalents.

4. Pursue transfer of infringing domain names: There are three primary mechanisms available to obtain the transfer of a .ca domain name.

i) Negotiated Transfers: Brand owners may negotiate the transfer of any domain name, assuming the registrant cooperates and the brand owner meets the CPRs.

ii) Domain Name Dispute Resolution Policy (CDRP) Arbitration: All .ca domain names are subject to the CDRP dispute resolution process, which is similar to the Uniform Domain-Name Dispute-Resolution Policy (UDRP) process applicable to .com and several other registries. To be eligible to commence a CDRP, the complainant must meet the CPRs for the domain name.

iii) Legal Action: If the domain name is being used for a website that infringes the brand owner’s Canadian trademark rights, it may be possible to recover the domain name as part of a legal action for trademark infringement.

5. Identify domain name ownership: The .ca registry is unique in that the WHOIS information for individual registrants is entirely private by default. In addition, while corporate registrants must maintain public WHOIS information, it is permissible to mask the true registrant by using privacy services. As a result, it is often difficult to identify the registrant when a brand owner is considering taking action to recover or purchase a domain name. The .ca registry provides three mechanisms to help address this issue:

i) an online tool to forward messages and attachments to the administrative contact for any specified .ca domain name

ii) a procedure to obtain private WHOIS information where a brand owner has been unable to resolve the matter within 14 days of providing notice of the dispute

iii) a procedure to obtain a list of all other .ca domain names held by the same registrant where a brand owner is considering whether to file a CDRP complaint

Conclusion: Canada’s .ca registry operates differently than many other registries. Non-Canadian brand owners with interests in the Canadian market will benefit from identifying valuable .ca domain names and taking steps to register them. In this regard, obtaining Canadian trademark registrations is one of the primary means of meeting the eligibility requirements to register trademarks as .ca domain names.

For further information, please contact Daniel Anthony or another member of our Trademarks team.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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