.CA Domain Names Held To Be Personal Property

A recent Ontario Superior Court of Justice decision (Court File No. CV-13-480391) has held that .CA domain names are personal property and as such are subject to the rules that govern any other type of personal property, including those against wrongful conversion.  Perhaps more importantly, the case appears to stand for the proposition that title in .CA domain names exists independently of the registration of those domain names.

17 .CA domain names were in issue,  including mold.ca and mould.ca.  All were registered by Mr. Sullivan in his own name for the benefit of a company that he co-founded with Mr. Dalrymple, called Mold.Ca Inc.  (Mold.Ca Inc.)  The business of Mold.Ca Inc., not surprisingly, involves  mold inspection and removal services in the Greater Toronto area.  Sullivan purchased the domain names using the company’s credit card but listed himself as the Registrant of all of the domain names, rather than Mold.Ca Inc., unbeknownst to Dalrymple. 

Sullivan parted ways with Dalrymple and Mold.Ca Inc. a year later, while Mold.Ca Inc. continued to carry on its business, as before.  Unbeknownst to Dalrymple, Sullivan retained the domain name registrations and the passwords for the domain name registrations and then subsequently transferred the domain name registrations to a third party (Romelus).   Once Dalrymple found out about the above events, he commenced a Canadian Internet Registration Authority (CIRA) Dispute Resolution Proceeding (CDRP) against Romelus.  The CDRP proceeding were unsuccessful because there was no evidence that the domain names had been registered by Romelus in bad faith (they hadn’t been), nor was there evidence that they were being used for other than legitimate purposes by Romelus.

Following the failed CDRP proceeding, Romelus transferred the domain names back to Sullivan and Sullivan began using them in a competing business to that of Mold.Ca Inc.  Undaunted by its loss in the CDRP, this turn of events led to Mold.Ca Inc. to commence proceedings in the Ontario Superior Court of Justice.  Finding in favour of Mold.Ca Inc., the Court held that “the issue is a simple matter of property law”, whereby title to the domain names belongs to the company, which had been wrongly converted by Sullivan.  The Court therefore ordered that all of the domain names, including all administrative information and passwords, be transferred to Mold.Ca Inc.

Putting The Accent On .CA Domains

The Canadian Internet Registration Authority (CIRA) has released the results of its first consultation on its proposed implementation of .CA domains with French accent characters (known as the Latin Supplement -1 Unicode characters), such as é à ü and ç.  

Under its initial implementation plan, CIRA proposed a sunrise period during which owners of .CA domain owners could register as many French accented variants of their existing ASCII (non- accented Latin-based script characters, namely the letters a-z) domains as they opted for.  For example, the owner of grace.ca could also register grâce.ca during the sunrise period, before that accented variant of grace.ca (and all other French accent variants) would be opened up for registration to anyone else who otherwise qualifies to own a .CA domain.

As a result of comments received during the first consultation period, many citing concerns about increased costs to .CA domain owners, phishing and the potential for consumer confusion, CIRA is now proposing to do away with any sort of sunrise and landrush periods and instead is proposing that only the owner of a .CA domain name with ASCII characters would have the right to register any or all French accented versions of that .CA domain. In addition, under the new proposal, once a French accented .CA domain name variant has been registered, it cannot be transferred without also transferring the ASCII .CA domain name and all other registered French accented .CA domain name variants.  CIRA refers to this concept as “character bundling”.   In addition, CIRA is also considering the feasibility of some additional French accent characters that are commonly used.

CIRA is seeking input and comments on its revised implementation plan, during a second consultation period, running from January 24 to February 24, 2012.

Survey On Preparation For New gTLDs

A survey is now being conducted by World Trademark Review (WTR), seeking input from marketing and trademark professionals as to their views on how industry is preparing for the impact of the new generic top level domains (gTLD) that ICANN (the Internet Corporation for Assigned Names and Numbers) appears to be pushing forward with.    The survey is supported by a number of domain name and brand protection service providers, trademark owner associations and professional marketing associations.

As previously reported on this blog, ICANN proposes to expand beyond the current gTLDs, of which there are 21, including .com, .org and .net.  Under the proposed expansion, any company will be permitted to set up its own domain registry under any term –  for example .cars, .honda, .mapleleafs, .canucks and pretty much anything else will be possible.  This development obviously has huge implications for all brand owners.

WTR’s survey is intended to provide a sense of how well prepared brand owners are for this coming change.

.CA Dispute Resolution Consultation Now Open

The Canadian Internet Registration Authority (CIRA) has initiated a consultation on the CIRA Domain Name Dispute Resolution Policy (CDRP).  The CDRP has been in place since 2002 and is intended to be a quick, relatively low cost arbitration forum for disputes over .CA domain names.  The stated purpose of the consultation is to solicit feedback from interested parties as to the effectiveness of the CDRP and whether it continues to meet the needs of its stakeholders. 

The consultation consists of a number of questions about the process itself, the tests that a complainant must meet, the remedies provided and the like.  Interestingly, the consultation notes that over the 8 years the CDRP has been in place, there have only been 149 decisions rendered, with the high water mark occurring in 2008, when there were 30 decisions.

The consultation is open from June 9 to September 17, 2010.

Municipality’s rights in name not retroactive under CDRP: westkelowna.ca

In District of West Kelowna v. Baremetal.com Inc. the District of West Kelowna (the “Municipality”) lost a Canadian Internet Registration Authority (CIRA) Dispute Resolution Policy (CDRP) proceeding involving the domain name westkelowna.ca, to an alleged cybersquatter.

On April 2, 2007, Baremetal.com Inc. (the “Registrant”), apparently operated by a businessman living in the Municipality, registered the domain name westkelowna.ca. Subsequently, on January 29, 2009, in response to an opinion poll, the Municipality legally changed its name from “Westside District Municipality” to the “District of West Kelowna”. The Municipality contacted the Registrant to request a transfer of the domain name, but the Registrant refused. As a result, the Municipality filed a complaint under the CDRP in an attempt to gain control of the domain name.

To succeed in a CDRP proceeding, Section 4.1 of the CDRP Policy provides that the Complainant must prove that:

(a) the disputed domain name is confusingly similar to a mark in which the Complainant had rights prior to the date of registration of the disputed domain name,

(b) the Registrant has registered the domain in bad faith,

and the Complainant must provide some evidence that:

(c) the Registrant has no legitimate interest in the domain name.

Even if the Complainant proves (a) and (b) and provides some evidence of (c), the Registrant will succeed in the proceeding if the Registrant proves, on a balance of probabilities, that the Registrant has a legitimate interest in the domain name.

In this case, the Complainant Municipality didn’t even make it out of the gate, as the Panel found that the Municipality did not have prior rights in the mark “West Kelowna”. Under CIRA’s Municipal Name Registration Policy, a municipality’s name is generally reserved for the use of that municipality; however, the Panel found that unless a municipal name is specifically listed in the Canadian Geographical Names Database (CGNDB) at the time of the domain name reservation, the name is not reserved for the use of the municipality. The Municipality also failed to provide sufficient evidence that it had rights in the mark due to use of the mark prior to the registration of the domain name.

As a result, the complaint was dismissed. The Panel did, however, refuse the Registrant’s request for costs, finding that the Municipality had not made the complaint in bad faith.

Trademark Clearinghouse To Help Combat Cybersquatting?

A story earlier this week reported that the Internet Corporation for Assigned Names and Numbers (ICANN) – the organization charged with oversight of the Internet, including the creation of new generic top level domains (gTLD’s) – is considering setting up a centralized database of trademarks to help combat cybersquatting and other negative domain name registration practices.  The proposed IP Clearinghouse would be a depository for trademarks and provide unified rules for trademark holders to block domain name registrations that include use of such trademarks, unless the applicant can prove that its proposed use will be legitimate.

This proposal will be closely monitored by the trademark community as ICANN continues to move forward with its controversial proposal to exponentially expand the number of gTLDs.  The concern of trademark holders is that the task of protecting their brands online, which is already difficult enough with the existing gTLDs, will become prohibitively expensive.

The idea of the IP Clearinghouse was one of the recommendations outlined in the Final Report on Trademark Protection of ICANN’s  Implementation Recommendation Team (IRT).  At the recent ICANN meeting in Sydney, the IRT presented its report. The IRT Final Report was open for public comment until June 29, 2009.   ICANN might not make a final decision on the idea until late 2009, at which time it could potentially decide on a variation of the IP Clearinghouse, depending on the public comments that it receives.

Though it appears to be a moving target at the moment, the launch of the new gTLDs could potentially take place as early as February or March of 2010.