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February 2020 Charity & NFP Law Update New Canadian UDRP Provider for Resolving Domain Name Disputes As digitalization moves forward at a rapid pace, disputes over domain names can arise for charities and not-for-profits, particularly where abusive registrations have been made in bad faith by third parties. Domain name dispute arbitrations are governed by global uniform rules. Canadian domain name disputes regarding “.ca” domain names are decided under the Canadian Internet Registration Authority’s Dispute Resolution Policy. Disputes regarding generic top level domains (“gTLD”) such as “.com”, “.org”, and “.net”, are dealt with pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”). The UDRP was established by the Internet Corporation for Assigned Names and Numbers (“ICANN”), which is an international non-profit corporation that coordinates the Domain Name System across the world. The UDRP sets out the legal framework for resolving domain name disputes between a domain name registrant and a third party when there has been an abusive registration. It applies to all generic top-level domain (“gTLD”) names (e.g. .com, .org, and .net), as well as some country code top-level domains, such as .au. The UDRP is particularly helpful to trademark owners who wish to recover domain names that have been registered in bad faith and are infringing their registered trademarks. Trademark owners looking to file a complaint under the UDRP now have an additional provider where they can submit their complaints. On November 7, 2019, the Canadian International Internet Dispute Resolution Centre (“CIIDRC”) started accepting applications for resolving domain name disputes under the UDRP. CIIDRC was approved by ICANN to become one of only six UDRP service providers in the world that include the Arab Center for Domain Name Dispute Resolution, Asian Domain Name Dispute Resolution Centre, The Czech Arbitration Court Arbitration Center for Internet Disputes, National Arbitration Forum, and the World Intellectual Property Office. A UDPR proceeding at the CIIDRC is commenced by the filing of an online complaint by a third party that must be in compliance with the UDPR rules of procedure. The respondent is then notified after the payment of filing fees, and given an opportunity to respond. The complainant may then select a one-member panel, or either party may choose to select a three-member panel and pay applicable fees. A decision is rendered by the panel and implemented by the registrar, which is then published. This entire process may be completed within 2 months. In order to succeed, the complainant must prove three elements: (i) the registrant’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the registrant’s domain name has been registered and is being used in bad faith. The remedies available are limited to the cancellation of the registrant’s domain name, or the transfer of registrant’s domain name registration to the complainant. As a result, charities and not-for-profits should keep this avenue in mind when looking for timely and cost-effective resolutions to domain name disputes involving their trademarks. Competition Bureau’s Role in Digital Advertising: Implications for Charities and Not-for-Profits |
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