By Steve Levy
If you’ve ever thought that the UDRP doesn’t cover .ca (Canada) domain names, you’re absolutely right! It doesn’t. However, there’s a similar process for .ca domains that was created by the Canadian Internet Registration Authority (“CIRA“) called the CIRA Domain Name Dispute Resolution Policy (“CDRP”). Just like the UDRP, trademark owners can file complaints against .ca domain names that infringe on their rights. The requirements of the CDRP are slightly different from those of the UDRP but the policy will be very familiar to those with experience in UDRP practice.
As an example, let’s look at the recent case involving the domain name commedesgarconscanada.ca. The Japan-based fashion powerhouse Comme des Garçons filed a complaint, arguing that the domain was being used to sell counterfeit goods while impersonating its brand. The site looked legit showing the same trademarks and a similar layout, but it wasn’t affiliated with the company at all.
The panelist didn’t mince words. He found that the domain name was confusingly similar to Comme des Garçons’ registered Canadian trademark, and that the registrant had no legitimate interest in the domain name. Worse, the registrant didn’t even bother responding to the complaint. That’s rather typical for cybersquatters and often a good sign for complainants.
The panel concluded that the domain was registered in bad faith because it was clearly designed to mislead consumers into thinking they were buying directly from Comme des Garçons. The site used the brand’s trademarks liberally, mimicked the look and feel of the official site, and didn’t provide any contact info. That, alone, should be a red flag for both consumers and trademark owners.
Even though the panel couldn’t confirm whether the goods sold were actually counterfeit (no receipts or investigator reports were submitted), it didn’t matter. The misleading use of the domain name alone was enough to warrant a transfer
So what does this mean for you? If you’re a trademark owner and someone’s squatting on a .ca domain that’s confusingly similar to your brand, you don’t have to just live with it or go to the expense of taking them to court in Canada. You can file a CDRP complaint, through a provider such as the Canadian International Internet Dispute Resolution Centre (CIIDRC), and if you meet the criteria, like having a corporate office or a registered trademark in Canada, you’ve got a shot at reclaiming the domain.