In a digital age, having an online presence has become critical to the success of a business. Having a straightforward, easy-to-find domain name can be key. If the ideal domain name for your organization is already taken, it may be possible to retrieve it.
Please note: The information in this blog post is specific to .ca domain names. We will be discussing .com names in an upcoming post.
Challenging a Domain Name
When an ideal domain name is taken, there are a few options available to your organization. Two key options are to negotiate with the current domain name holder to buy the name or to dispute the domain name through legal means such as the Canadian Internet Registration Authority’s (“CIRA”) Dispute Resolution Process.
Grounds to Challenge
A domain name cannot be disputed simply because the current domain name holder does not want to sell it to your organization. For a complaint to CIRA to be successful, each of the following requirements must be met:
1. Earlier Rights to a Trademark: Your organization must have rights to a “mark” similar to the domain name, or a confusingly similar name that pre-dates the acquisition of the domain name. The mark can be either a registered trademark or common law trademark. This can apply even if the domain name is not quite the same as the name you have rights to, but is similar and is being used for fraudulent purposes.
2. Registered in Bad Faith: The name must be registered in bad faith. Demonstration of registration in bad faith includes domain names registered:
- For the purpose of selling, renting, licensing or transferring the name for value beyond the costs of registration;
- To prevent a mark owner from registering the domain name;
- As part of a pattern of registering names to disrupt a mark owner’s business; or
- To attract users for financial gain by creating confusion with the name.
3. Evidence of No Legitimate Interest: There must be evidence that the name holder has no legitimate interest in the domain name. The domain holder can show legitimate interest in good faith if it:
- Is a mark the domain name holder had rights in;
- Was registered in association with its wares, services, or business;
- Is associated with a non-commercial activity of the domain holder;
- Is a legal name or was a name the domain name holder is commonly identified by; or
- Is the geographical name of the domain name holder’s place of business.
Both the first and second requirements must be met, and at minimum, some evidence of the third requirement must be shown for a domain dispute to succeed.
Last, it may be possible to dispute a domain name where the Canadian residency requirements are not met, as the agreement domain name holders enter into when registering a name requires that the registrant meet Canadian presence requirements. If your organization has reason to doubt that the domain name holder meets the residency requirements, you may also be able to dispute it on this basis.
Takeaways and Lessons for Organizations
There are a few options for your organization to retrieve a .ca domain name, and the best option will depend on the circumstances. MLT Aikins has the right combination of legal and industry experience to help you determine the best option for you. Contact a member of our team for assistance.
Note: This article is of a general nature only and is not exhaustive of all possible legal rights or remedies. In addition, laws may change over time and should be interpreted only in the context of particular circumstances such that these materials are not intended to be relied upon or taken as legal advice or opinion. Readers should consult a legal professional for specific advice in any particular situation.