Only in Canada? .CA Whois Policy will create more uncertainty for Trade-mark owners

Still catching up on press releases received over the last few weeks. The Canadian Internet Registration Authority (“CIRA”) is pushing ahead with implementation of its new Whois Policy despite resistance from trade-mark owners and other IP rights holders. Once implemented (likely in late fall of 2006), an individual Registrant of a .CA domain name will be able to cloak their identity unless they opt to disclose it. This is so, even if the .CA domain name links to a commercial website. Disclosure can be forced only in certain limited circumstances, pursuant to a court order, search warrant and the like.

Trade-mark or other IP rights owners who believe an individual Registrant is cybersquatting or otherwise infringing their rights will have no way to find out who that individual is, to contact them directly to try to work out a settlement or to properly assess the likelihood of a successful dispute resolution proceeding (called a CDRP proceeding). CIRA have rejected their own Consultant’s recommendation that CDRP Complainants should have access to the identity of an individual Registrant, subject to various safeguards.  CIRA’s suggested solution is to permit a Complainant to file rebuttal evidence on the issue of legitimate interest, in response to the evidence, if any, filed by an individual Registrant on that issue. Filing additional evidence on the issue of bad faith will require permission of the dispute resolution panel.

A potential Complainant under this new system will have a risky and expensive decision to make – whether to commence a CDRP proceeding without a crucial piece of information – the identity of the individual Registrant – and risk finding out only after the Registrant files his or her evidence (this requires that the Complainant first submit its Complaint and evidence and incur the fees inherent in doing so) that he or she indeed has a legitimate interest in the domain name – which if the Complainant had known from the outset, the CDRP might have been avoided altogether.

Interesting to note that CIRA’s new Whois policy doesn’t contain the commercial purpose exception that applies to .co.uk domain names, which permits Nominet to release the Whois details even if the Registrant is an individual – not to mention that it’s also an opt out system.

In a related development, CIRA is currently seeking public input on how to implement its new Whois policy and is seeking to hire a consultant to complete a review of the CDRP process and recommend options for change.

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Branding Blogs List

One of the trends that we intend to track is how trade-marks fit within the brand development process. To that end, we’ve created the list below to help explore the branding blogosphere. Do you have, or know of, a great blog that’s missing? Let us know by sending a note to Larry Munn.

Branding Blogs List:

Goliaths’ enforcement draws attention

Google has been the subject of recent media coverage regarding its letters sent to media organizations warning them not to use its trade-mark as a verb. While the media reports suggest Google has lost its sense of humour and bloggers poke fun at the examples Google’s lawyers have provided as acceptable usage of the trade-mark, a principal tenet regarding trade-mark usage is being glossed over. Trade-marks are valuable assets of a business, the use of which must be policed by the owner.

As Google and its lawyers correctly point out, a trade-mark is an adjective and should not be used as a verb or a noun. If a mark is used as a noun or a verb, it risks being genericized and losing its distinctiveness.A non-distinctive mark is likely not enforceable by the owner against others.

Google’s tremendous success in building its brand is a double-edged sword. The GOOGLE mark is now so well known that its use has entered the everyday language – there are now dictionary entries in the Oxford English Dictionary and Merriam-Webster which list “to google”.

On a related note, Apple is also policing use of its IPOD mark – trying to stop “pod” from being used by others in association with their products or services, claiming such use infringes its IPOD trade-mark.

Large successful companies such as Google and Apple may be painted as “Goliaths” in their campaigns to ensure proper use of their marks or stop infringement. Given the value of their brands (see the BusinessWeek Online/Interbrand Top 100 Brands), it’s hard to blame them. In fact, their shareholders would skewer management if it didn’t take this stance.

About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors