Volume I

Issue : 1: July 10, 2003

• The Dangers of Text Messaging
• Pop Up Purveyor Prevails in District Court
• Intel Loses Email Trespass Case on Appeal in California
• U.S. Court of Appeals Upholds Aimster Decision
• U.S. Federal Court of Appeal Reverses "Must Carry" Java Order Against Microsoft
• New York Court of Appeals Releases Key Decision in Telecommuting Case
• Quebec Court Upholds Websites Terms of Use Based on Implied Consent
• Adware Company Wins U.S. Summary Judgment Against U-Haul
• Government of Canada Wins Back Dot-Ca Domain Names in CDRP Proceeding
• Industry Canada Releases Authentication Consultation Report
• U.S. Supreme Court Upholds CIPA in Software Filtering Case
• U.S. Supreme Court Declines to Hear Two Key Cases
• Doctor Suspended Over Prescribing Medication For Customers of Online Pharmacies
• U.S. Court of Appeals Overturns Texas Online Wines Sales Law

Home > Volume I > Issue 1: July 10, 2003 > Government of Canada Wins Back Dot-Ca Domain Names in CDRP Proceeding

Government of Canada Wins Back Dot-Ca Domain Names in CDRP Proceeding

A recent decision under the Canadian Internet Registration Authority's ("CIRA") Domain Name Dispute Resolution Policy (the "CDRP") involving the Government of Canada as the complainant and David Bedford ("Bedford") as the registrant has resulted in an order for the transfer of a number of dot-ca domain names to the Canadian government (the " CDRP Decision "). The same parties were also involved in a proceeding under the Uniform Domain Name Dispute Resolution Policy (the "UDRP") in June of 2001 (the " UDRP Decision ").

In the UDRP Decision, the Government of Canada successfully challenged Bedford 's registration of 31 domain names, such as governmentofcanada.com, canadiancustoms. com, transportcanada.com, and statcanada.com. The CDRP Decision involved 10 domain names registered by Bedford , such as governmentofcanada.ca, ecgc.ca and publicworkscanada.ca. The Canadian government was successful in challenging all of the registrations except for the canadiancustoms.ca domain name, which the panel held was not confusingly similar to the government's trade-mark "Canada Customs and Revenue Agency".

The CDRP Decision is the first under the CDRP dealing with government trade-marks, in particular, official marks under paragraph 9(1)(n) of the Canadian Trade-marks Act . It is an important decision for several reasons, two of the more significant of which are as follows: first, the CDRP Decision states that if a complainant is challenging a dot-ca domain name registration based on a trade-mark registered in, or an official mark published by, the Canadian Intellectual Property Office prior to the date of the registration of the disputed domain name, the complainant is not required to establish distinctiveness or use of the mark - the mere registration or publication is sufficient to establish rights in the trade-mark that can be used to challenge the registered domain name.

Second, two earlier decisions under the CDRP indicated that the test to be applied under the CDRP when considering whether a domain name is "confusingly similar" with a trade-mark in which the complainant has rights might be one of "confusion", a test more analogous to conventional trade-mark disputes. The panel in the CDRP Decision held that the proper test is one of resemblance based upon first impression and imperfect recollection. Consequently, the panel noted, decisions pursuant to the UDRP are of little or no assistance in interpreting this aspect of the CDRP because, unlike the CDRP, the UDRP does not contain a specific definition of the term "confusingly similar".

For a copy of the CDRP Decision, visit:

http://www.cira.ca/en/dpr-decisions/00011govt-of-canada-En.pdf

For a copy of the UDRP Decision, visit:

http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0470.html