For Sale Consultation on CIRA’s Domain Name Dispute Resolution Policy

[msn]

Please take the time - you may need an hour or more for thoughtful answers - as soon as possible to respond to the request for comments, as radical changes will come unless people speak up now on the issue.


The Canadian Internet Registration Authority (CIRA) is conducting a consultation on the CIRA Domain Name Dispute Resolution Policy (CDRP). This policy, launched in 2002, is a forum which is intended to provide quick, out-of-court arbitrations at relatively low cost for .CA domain names registered in bad faith. The overall purpose of this consultation is to obtain feedback from interested parties on the effectiveness of the CDRP, and to determine whether this Policy continues to meet the needs of its stakeholders. To this end, CIRA has engaged the services of The Strategic Counsel, a national public opinion and marketing research firm, to manage the open consultation process.

CIRA would appreciate your participation in this consultation. The consultation consists of specific questions in areas which CIRA believes input is important, although you are free to submit additional comments on any areas that you wish relating to the CDRP.

You can access the consultation by linking to the following webpage prepared by The Strategic Counsel devoted to the CDRP Consultation: http://survey.openvenue.com/CIRA_CDRPConsultation

Please forward this link to anyone you think would be interested in participating in the CDRP Consultation.

The consultation is open from June 9, 2010 to September 17, 2010. Following the close of the consultation period, submissions will be posted on CIRA’s website. CIRA will use the submissions in updating the Policy to meet the needs of its various stakeholders.

Please note that all your answers and comments will be published on CIRA’s website after the public consultation has concluded, unless you clearly indicate that you wish them to be confidential.

If you would like more information on this consultation or the current CIRA Domain Name Dispute Resolution Policy (CDRP), please visit the CIRA website or you may contact CIRA at 1-877-860-1411.

Sincerely,

Pamela Ward

Senior Associate
The Strategic Counsel

 

[Wzhxvy]

Wow, just completed the survey. Anyone who has even a mild interest in this topic should participate in this process. Some of the changes being contemplated are concerning.

 

[whitebark]

Went through it myself. The parts about taking away domain names that "are not being used" is just tad on the bad side.

What constitutes not being used/utilized? How do they know I am not making the software, was making a site and put it off/ran out of funds/changed ideas mid-stream etc?

Some domains I will just not park - sometimes they take too long to get out of the penalty box placed by the search engines. And parking them (putting them to 'use') leaves some open to challenge if infringing ads appear. So this leaves placing up a single page - or will that be enough for them to be in 'use'? Or we can use them for email...

silly stuff

 

[jaydub]

Just went through and completed it.

 

[msn]

Went through it myself. The parts about taking away domain names that "are not being used" is just tad on the bad side.

What constitutes not being used/utilized? How do they know I am not making the software, was making a site and put it off/ran out of funds/changed ideas mid-stream etc?

Some domains I will just not park - sometimes they take too long to get out of the penalty box placed by the search engines. And parking them (putting them to 'use') leaves some open to challenge if infringing ads appear. So this leaves placing up a single page - or will that be enough for them to be in 'use'? Or we can use them for email...

silly stuff

Just "using them for e-mail" does not help you if there is an issue with CDRP, and you are right, it seems if you use the domain you get hit and if you do not use the domain you get hit. The worst part seems to be a kind of reverse onus where the registrant will need to pay costs to fight and the apparent desire to use UDRP concepts even when they are not consistent with how everything works in Canada.

It seems like they will propose some kind of 'mediation' and it means a very cheap and fast way to go after a registrant, and if the registrant does not like the result, then the registrant would have to go a panel to keep the domain.

Also watch out that some of the questions are very carefully worded to get a response they want. If you have other concerns you can simply state them and send them in as well.

 

[6sons]

Went through it myself. The parts about taking away domain names that "are not being used" is just tad on the bad side. silly stuff

This question applies to generic or descriptive domains. As it currently stands you have to have "use" to prove a legitimate interest. They are asking if we think that "mere ownership" be enough to prove legitimate interest. This is the way it is with UDRP. The answer here should be "yes" imo.

Generic domains are like any other property. To give it perspective... If I am not using a vacant piece of land should someone be able to challenge me because of that? No, my mere ownership determines my legitimate interest and I should have to spend NO money or time on it.

As for the survey, as some have commented, the questions are tricky. I believe it is meant to help complainants and to provide more guidance for panelists. This particular one (maybe more) favors respondants.

 

[msn]

This question applies to generic or descriptive domains. As it currently stands you have to have "use" to prove a legitimate interest. They are asking if we think that "mere ownership" be enough to prove legitimate interest. This is the way it is with UDRP. The answer here should be "yes" imo.

Generic domains are like any other property. To give it perspective... If I am not using a vacant piece of land should someone be able to challenge me because of that? No, my mere ownership determines my legitimate interest and I should have to spend NO money or time on it.

As for the survey, as some have commented, the questions are tricky. I believe it is meant to help complainants and to provide more guidance for panelists. This particular one (maybe more) favors respondants.

Without mentioning the UDRP you can look to CIPO: you can register a trade mark with intention to use and sit on it for years, or sell it or license it to another party. That seems to be a good parallel for CIRA to follow and keeps things consistent with the way in which we deal with trade marks in Canada, and this is the whole point of having the framework in the first place.

 

[6sons]

Without mentioning the UDRP you can look to CIPO: you can register a trade mark with intention to use and sit on it for years, or sell it or license it to another party. That seems to be a good parallel for CIRA to follow and keeps things consistent with the way in which we deal with trade marks in Canada, and this is the whole point of having the framework in the first place.

This is a reason that can be used to support a yes answer to the question of legetimite use by "mere ownership" perhaps. In CIPO how do they determine " intention" though? If it means that it includes some preparation than thats a pretty heavy burden for a large number of generics. If on the other hand you only have to declare you have "intention" then fine. Otherwise UDRP is better imo.

 

[msn]

We could take your example also for land; no one can force you to sell your land, but they can try to force you. Nothing currently prevents someone going after the registrant of a generic domain .ca domain name, and if the domain is valuable enough, the tactic might work if the registrant is not vigilant.

But first of all, you could not register something like 'ice cream' as a brand for ice cream, but you could register 'shoe' instead. A trade mark for Shoe brand ice cream would prevent others from selling ice cream under the 'shoe' name, but would still allow people to use the word shoe otherwise, especially for shoes.

You can either register stating you already offer goods or services under a specific brand name, say 'Six Burgers' for a restaurant, or you could state your intent to use the mark in the future. If the mark is approved and registered you have a number of years to exercise your rights in the mark.

 

[6sons]

I know about these issues. My question was how do you prove intention when holding trademarks that are not used? My point is that if you have to prove intention with preparation what good is a cipo parallel.

We could take your example also for land; no one can force you to sell your land, but they can try to force you. Nothing currently prevents someone going after the registrant of a generic domain .ca domain name, and if the domain is valuable enough, the tactic might work if the registrant is not vigilant.

But first of all, you could not register something like 'ice cream' as a brand for ice cream, but you could register 'shoe' instead. A trade mark for Shoe brand ice cream would prevent others from selling ice cream under the 'shoe' name, but would still allow people to use the word shoe otherwise, especially for shoes.

You can either register stating you already offer goods or services under a specific brand name, say 'Six Burgers' for a restaurant, or you could state your intent to use the mark in the future. If the mark is approved and registered you have a number of years to exercise your rights in the mark.

 

[msn]

I know about these issues. My question was how do you prove intention when holding trademarks that are not used? My point is that if you have to prove intention with preparation what good is a cipo parallel.

Let us be very clear here: do you mean trade mark domains or do you mean generic domains which may also have trade mark equivalents?

If someone is sitting on a domain for vodafone.ca that is a very different situation from being the registrant for jazz.ca or some domain like that.

 

[6sons]

Let us be very clear here: do you mean trade mark domains or do you mean generic domains which may also have trade mark equivalents?

If someone is sitting on a domain for vodafone.ca that is a very different situation from being the registrant for jazz.ca or some domain like that.

I hope this becomes clear. We were discussing the point made about "mere ownership of generic domains (even without use) as being sufficient to prove legitimate interest" under UDRP and potentially CDRP resulting from current study. I am saying thats a good thing.

You have stated it is better to parallel Cipo vs UDRP. To support this you stated "you can register a trade mark with intention to use and sit on it for years". What I have simply asked you is "How do you prove intention? with preparations for use or are you saying that you can simply declare you have had intentiions?

 

[Irish31]

Personally, this does not overly concern me as long as the .ca extension is closed to the outside world. If CIRA opens it up, I will be fearful. All the scumbags in the world will have a new extension to pilfer. Would CIRA still oversee all claims if they opened up the extension?

And as of right now, what is the slam dunk, no contest way to protect your name without building a full brand around it? Is CIRA basically manuvering themselves into a position where any domains being held as an investment will be stripped away eventually?

 

[msn]

I hope this becomes clear. We were discussing the point made about "mere ownership of generic domains (even without use) as being sufficient to prove legitimate interest" under UDRP and potentially CDRP resulting from current study. I am saying thats a good thing.

You have stated it is better to parallel Cipo vs UDRP. To support this you stated "you can register a trade mark with intention to use and sit on it for years". What I have simply asked you is "How do you prove intention? with preparations for use or are you saying that you can simply declare you have had intentiions?

What I meant was there is no need to invoke UDRP in order the recognise the 'right' to register and hold a generic domain without fear of some party making trouble. The reason is recognised also at CIPO: obviously generic terms are permitted to be used in trade marks only when they are used in non-obvious ways. This is why I gave the example of Shoe ice cream. Any successful trade mark applications using generic terms specifically disclaim any interest in the term outside the requested protections afforded by the marks.

Again, the larger issue here is CIRA using Canadian models for its system rather than things from the UDRP and similar systems. You can come up with many sources of inspiration for making changes to the rules, but if you take one good aspect from the UDRP someone will say they will also take a bad thing from the UDRP to use as well.

Lastly, intention to use at CIPO exists implicitly: if you file application to register a trade mark, you are seeking to reserve a special right in the term. Ergo, if you do not intend to ever use or seek to protect a term with a trademark registration, you would not make application in the first place.

If it is not clear please look at the CIPO site itself.

Personally, this does not overly concern me as long as the .ca extension is closed to the outside world. If CIRA opens it up, I will be fearful. All the scumbags in the world will have a new extension to pilfer. Would CIRA still oversee all claims if they opened up the extension?

And as of right now, what is the slam dunk, no contest way to protect your name without building a full brand around it? Is CIRA basically manuvering themselves into a position where any domains being held as an investment will be stripped away eventually?

This is one reason why the UDRP references bother me since any move to harmonise any of the CIRA rules with the UDRP would serve to make it easier for anyone outside of Canada to then jump into the .ca space and take over.

If there are domains that you need or want to protect right now you need to understand if they are potentially at risk to some kind of challenge. Generally they are not going to be subject to someone coming along in good faith making an issue of things unless they have active existing trade mark registrations or the like.