CIRA Changes Domain Name Dispute Resolution Policy For .CA

For well over a decade now, Canadians have become accustomed to seeing “.ca” all over the web.  The Canadian web suffix is one of the fastest growing top level domains (TLDs) in the world.  For many domain registrants, .ca serves as a branding tool to designate a site or product as being “made in Canada”.  While the web may not have national boarders (at least not the type patrolled by customs agents), the argument can be made that a .ca designation serves as a key identifier and one Canadians (and those seeking Canadian content) use often to distinguish sites registered in Canada from the rest of the internet’s vast repertoire.

Photo by Svilen Milev

.ca is a “country code top-level domain” (ccTLD) and like any TLD must be overseen by a governing body. The Canadian Internet Registration Authority (CIRA) is the organization responsible for managing the .ca domain.  Established in 1998, CIRA took over the management of the .ca domain in 2000.  Until that time, it was overseen by a volunteer organization based out of UBC (lead by John Demco, former Computing Facilities Manager at the UBC Department of Computer Science).  According to CIRA, since it’s founding, over 1.6 million .ca domain names have been registered. 

Among the many tasks CIRA carries out, probably the most important is the implementation of its Domain Name Dispute Resolution Policy (CDRP).  This policy (an off-shoot of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP)) is CIRA’s adjudication process by which trademark owners and businesses may enforce their marks against registrants who they believe are in violation of their rights. Businesses can also use this forum to combat cyber squatting- the practice of buying up domain names only to sell them to businesses who wish to register them at a higher price. 

The changes to the CDRP include:

“Rights” and “Use”: CIRA has seen fit to do away with these definitions in the policy.  On their web site CIRA explains that these definitions are more than anything a hindrance and create “overly technical and complex requirements in terms of what rights qualify for protection”.

Codification of “confusingly similar” analysis: CIRA has opted to standardize the test utilized by its panellists when determining whether a domain name is confusingly similar with a complainants mark. They’ve opted to use the “narrow resemblance” test over the traditional , broader confusion analysis of trademark law.  This test focuses on how much the domain name in question resembles the complainants mark in “appearance, sound and suggested idea” (see CIRA web site for more detail on the test).  

Changes to Bad Faith: If a complainant wishes their action to succeed, they must show, as per paragraph 4.1 of the CDRP, that the domain name was registered in bad faith (the act defines bad faith in paragraph 3.5).  The bad faith factors listed in the policy are now non-exhaustive- meaning that complainants may attempt to show bad faith on the part of the registrant in a manner not specifically contemplated by the policy.  CIRA has also added "use for commercial gain" to the list of factors mentioned in the CDRP.

Electronic filing: CIRA is now allowing parties to file all documents electronically in addition to hard copy filing.  If one wishes to file documents in hard copy, five copies must be made and faxed where one electronic copy is sufficient.  Wouldn’t it be nice if courts would follow suit...we can dream.

A more exhaustive list of modifications made to the CDRP can be found at the above link to CIRA’s web site.

Speculation on the changes has already crept into the blogosphere.  Professor Michael Geist, while praising some of the changes as being efficacious and appropriate to the Canadian context, had at least one criticism against the modification of the bad faith factors to become non-exhaustive:

“The exhaustive list was intended to guard against the ICANN experience where dispute panellists ventured well beyond clear cases of cybersquatting by creating their own categories of bad faith. Under the new CIRA policy, the bad faith list is now non-exhaustive, opening the door to more domain name dispute claims and increasing the risk of inconsistent decisions.”

Only time will tell if CIRA’s new moves will have the effect of streamlining the domain dispute resolution process.  The standardization of the confusion test should militate in favour of that reality while the opening of the bad faith factors may (according to Geist) hinder it. Whatever, the outcome, no one can rightly accuse CIRA of inaction.  

Hugo Boss shuts down Vietnamese domain name deemed confusing and in bad faith

On March 29^th, 2011, Hugo Boss filed a complaint with the World Intellectual Property Organization (WIPO)’s Arbitration and Mediation Center against a Vietnamese Domain name owner named Luong Dinh Dung.  The disputed domain, www.highboss.com, was originally registered on March 17^th, 2009 and was found to have incorporated images intended to confuse and mislead visitors of the site.

Photo by Renjith Krishnan

Prior to the complaint, the Vietnam Intellectual Property Research Institute (VIPRI) conducted an assessment of the site concluding that the “HIGH BOSS” logo was confusingly similar to the “HUGO BOSS” registered trademark which has full legal recognition in Vietnam. 

The administrative panel’s reasons for turning over ownership of the domain to Hugo Boss were threefold.

First, they found that the domain was confusingly similar to Hugo Boss’s registered trademark. The Panel noted that the swapping of the word “High” for Hugo (effectively changing two letters) was of no consequence and that on that basis alone the domain should be turned over.

Second, they found that the respondent had no legitimate interest in the domain.  A respondent can refute such a claim by showing:

-        -  That prior to the commencement of the complaint, that they were or were preparing to use the domain in connection with a “bona fide offering of goods or services”.

-         - That the respondent themselves are “commonly known” by the domain.

-        -  That the respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

-The owner of the infringing domain didn’t even muster an effort to prove any of these elements. 

Finally, the Panel found that the owner of the domain registered it in bad faith.  In addition to giving merit to the VIPRI’s report, the Panel cited an e-mail written by the owner of the infringing domain which they found to be false and dishonest.  The finding of bad faith was primarily based on the negative inference the Panel drew from this less than truthful statement. 

They ordered that the domain be transferred to the complainant, Hugo Boss, who clearly shut the site down (currently the message “Bad Request (Invalid Hostname)” comes up if you try to access the domain). A clear cut win for Hugo Boss and lovers of fashion everywhere.

Showdown Between Dental Associations at the Trademark Opposition Board

When I read the summary of this TMOB case I just knew I had to write about it. This is a perfect example of the absurdity that can result from time to time in the IP world.  

In a decision dated January 24^th 2011, the trademark opposition board ruled in favour of the Canadian Dental Hygienists’ Association in their effort to foil the Canadian Dental Associations attempt to register a trademark for “NATIONAL DENTAL HEALTH MONTH/MOIS NATIONAL DE LA SANTÉ DENTAIRE”.

The Board member ruled that the mark was invalid on two grounds: 

First, The CDHA (opponent) was successful in convincing the board that the CDA’s (applicant) marks was confusing with their own: “NATIONAL DENTAL HYGIENE WEEK/SEMAINE NATIONALE DE L’HYGIÈNE DENTAIRE”.  It was found that the marks were very similar in appearance and that the nature of the trade or service undertaken by the parties was- though not identical- quite similar.  That coupled with the Board’s conclusion that CDA did not provide any evidence of use of the mark was sufficient to cause confusion in the eyes of the average consumer. 

Second, the Board found that the mark was descriptive of the service and therefore not eligible for registration under the trademark act. The CDA disclaimed all the individual words in the mark claiming benefit of protection on the whole phrase only.  The Board found that the phrase in English and its French translation were both descriptive in the respective language.  

The CDA argued for a narrow interpretation of section 12(1)(b) TMA which says that a mark is may not be registered when:

(b) Whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language (emphasis added).

They argued that the mark is only invalid if it is descriptive or deceptively misdescriptive in English OR French and not when it is descriptive in both languages at the same time.  

In the past, the TMOB has interpreted this section to mean that a mark composed of words in both English and French can escape the fate of invalidity even though the individual words may be purely descriptive in either language. For example, in Coca-Cola Co. v. Cliffstar Corp (1993), 49 C.P.R. (3d) 358 (T.M.O.B.), the Board allowed the registration of “LE JUICE” even though each word on its own would not be eligible for protection nor would the mark if both words were in either English or French (“THE JUICE” or “LE JUS”).

In this case however, the Board member found that argument unconvincing. Including a mere translation of a descriptive phrase does not make the mark as a whole any less descriptive. The English version is descriptive in English and the French version is descriptive in French. Allowing the mark in this case would be a misinterpretation of parliament’s intentions in enacting the measure. 

Ironically, the Board member mentioned in passing that it was not her place in the course of this matter to comment on the descriptive nature of the opponents mark.  In claiming that the CDA’s mark is confusing with their own and then claiming that the mark is descriptive they essentially labeled their own mark as descriptive.  One can’t help but laugh at this instance of pot and kettle.

Though I completely agree with the ruling of the Board in this case, I think it represents somewhat of a low point in the world of trademarks.  After all, these are two non-profit entities whose common mission is the promotion of dental health and hygiene in Canada.  The fact that these two bodies are registering and opposing trademarks of this nature is kind of sad.  The fact that tax payer dollars are going into settling these matters is both sad and frustrating. 

But hey, at least internet is affordab…forget it.