With over 2.3 million .ca domain registrations, .ca is the world's eighth-fastest growing domain extension (CIRA). The .ca domain represents an important tool for companies operating in the Canadian marketplace. What follows are three reasons why it is advisable to proactively secure key brands as .ca domain names at the earliest opportunity, particularly for non-Canadian brand owners planning to launch in Canada at a later date.
i. Benefits of having a .ca domain name
The .ca registry is trusted and valued by Canadians with eighty-five per cent of Canadian Internet users considering .ca as an important resource for Canadians. The .ca extension instantly signals to Canadian consumers that the website's products and services are available within Canada and can give the impression of "buying local". Canadians also tend to place a high degree of trust in .ca domains. As a result, .ca domain names are an excellent tool for non-Canadian brand owners to market their products and services in Canada.
ii. Canadian Presence Requirements
In order to register a .ca domain name, all registrants must meet the Canadian Presence Requirements (CPRs). Generally, this means that a registrant must be a Canadian entity or have a corresponding Canadian trademark registration. Many non-Canadian companies do not automatically meet the CPRs and as a result delay registering a .ca domain name until after their trademarks are registered in Canada. This provides an opportunity for cybersquatters to register .ca domain names corresponding to brands that are expected to enter Canada or have recently entered Canada. However, there are several fast and cost effective mechanisms for non-Canadian companies to quickly comply with the CPRs and register .ca domain names, such as incorporation of a shelf company in a Canadian province that does not require local directors. Therefore, the CPRs should not be seen as a barrier to obtaining .ca domain names.
iii. Recovering domain names registered in bad faith
Like other domain registries, .ca operates on a first-come first-served basis. However, in the event of a bad faith registration, there is a domain name dispute resolution process specific to .ca domain names called the CIRA Domain Name Dispute Resolution Policy (CDRP). The CDRP is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) process applicable to .com and other registries, though there are important differences.
One difference between the CDRP and UDRP is that the CDRP requires a complainant to show rights in a mark in Canada that pre-date registration of the domain name at issue. This provides an incentive for cybersquatters to register .ca domains for non-Canadian brands that do not yet enjoy use or reputation in Canada. In such cases, without evidence of prior rights in Canada, it may not be possible for a brand owner to succeed in a CDRP, even with evidence of bad faith intent or conduct. One common approach for cybersqsuatters is to register the .ca equivalent to a company's .com domain name. For example, in one CDRP proceeding, a cybersquatter had registered a new car brand as a .ca domain name after the brand owner began sales in the United States using the corresponding .com domain name, but before the brand was launched in Canada. The lack of rights of the brand owner in the mark in Canada before the .ca domain name was registered led to the CDRP being dismissed, despite clear evidence of bad faith conduct.
Another limitation of the CDRP is that it can be difficult to show bad faith in the case of domain names that are comprised of generic, geographic or descriptive words. In such cases, absent clear evidence of bad faith conduct, the registrant may argue that the domain name was purchased for its generic value and not to target the brand owner's reputation. For example, in a recent CDRP proceeding, a complainant with a 30-year global reputation in the mark TOUS tried to recover the domain name tous.ca. The registrant was operating a pay-per-click website and had a history of bad faith domain registrations. It was held that the French word "tous", meaning "all", was too generic to infer bad faith registration merely from a pay-per-click website and past conduct. In view of the above, the CDRP should be viewed as a useful resource, but is not a substitute for early registration of important .ca domain names.
Conclusion
.ca domain names are a valuable resource for companies intending to market their products and services in Canada. There are fast and cost effective mechanisms available to non-Canadian companies to comply with the CPRs in order to register .ca domain names. Failure to promptly secure important .ca domain names leaves the domain names at risk of cybersquatting, which can result in increased costs, and in some cases, loss of certain domain names entirely. It is advisable to proactively register .ca domain names of interest as early as possible.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.
