Under its initial implementation plan, CIRA proposed a sunrise period during which owners of .CA domain owners could register as many French accented variants of their existing ASCII (non- accented Latin-based script characters, namely the letters a-z) domains as they opted for.  For example, the owner of grace.ca could also register grâce.ca during the sunrise period, before that accented variant of grace.ca (and all other French accent variants) would be opened up for registration to anyone else who otherwise qualifies to own a .CA domain.

As a result of comments received during the first consultation period, many citing concerns about increased costs to .CA domain owners, phishing and the potential for consumer confusion, CIRA is now proposing to do away with any sort of sunrise and landrush periods and instead is proposing that only the owner of a .CA domain name with ASCII characters would have the right to register any or all French accented versions of that .CA domain. In addition, under the new proposal, once a French accented .CA domain name variant has been registered, it cannot be transferred without also transferring the ASCII .CA domain name and all other registered French accented .CA domain name variants.  CIRA refers to this concept as “character bundling”.   In addition, CIRA is also considering the feasibility of some additional French accent characters that are commonly used.

CIRA is seeking input and comments on its revised implementation plan, during a second consultation period, running from January 24 to February 24, 2012.

As previously reported on this blog, ICANN proposes to expand beyond the current gTLDs, of which there are 21, including .com, .org and .net.  Under the proposed expansion, any company will be permitted to set up its own domain registry under any term –  for example .cars, .honda, .mapleleafs, .canucks and pretty much anything else will be possible.  This development obviously has huge implications for all brand owners.

WTR’s survey is intended to provide a sense of how well prepared brand owners are for this coming change.

The consultation consists of a number of questions about the process itself, the tests that a complainant must meet, the remedies provided and the like.  Interestingly, the consultation notes that over the 8 years the CDRP has been in place, there have only been 149 decisions rendered, with the high water mark occurring in 2008, when there were 30 decisions.

The consultation is open from June 9 to September 17, 2010.

On April 2, 2007, Baremetal.com Inc. (the “Registrant”), apparently operated by a businessman living in the Municipality, registered the domain name westkelowna.ca. Subsequently, on January 29, 2009, in response to an opinion poll, the Municipality legally changed its name from “Westside District Municipality” to the “District of West Kelowna”. The Municipality contacted the Registrant to request a transfer of the domain name, but the Registrant refused. As a result, the Municipality filed a complaint under the CDRP in an attempt to gain control of the domain name.

To succeed in a CDRP proceeding, Section 4.1 of the CDRP Policy provides that the Complainant must prove that:

(a) the disputed domain name is confusingly similar to a mark in which the Complainant had rights prior to the date of registration of the disputed domain name,

(b) the Registrant has registered the domain in bad faith,

and the Complainant must provide some evidence that:

(c) the Registrant has no legitimate interest in the domain name.

Even if the Complainant proves (a) and (b) and provides some evidence of (c), the Registrant will succeed in the proceeding if the Registrant proves, on a balance of probabilities, that the Registrant has a legitimate interest in the domain name.

In this case, the Complainant Municipality didn’t even make it out of the gate, as the Panel found that the Municipality did not have prior rights in the mark “West Kelowna”. Under CIRA’s Municipal Name Registration Policy, a municipality’s name is generally reserved for the use of that municipality; however, the Panel found that unless a municipal name is specifically listed in the Canadian Geographical Names Database (CGNDB) at the time of the domain name reservation, the name is not reserved for the use of the municipality. The Municipality also failed to provide sufficient evidence that it had rights in the mark due to use of the mark prior to the registration of the domain name.

As a result, the complaint was dismissed. The Panel did, however, refuse the Registrant’s request for costs, finding that the Municipality had not made the complaint in bad faith.

The reports state that Chris Bosh had won an earlier judgment for $120,000 US from a cybersquatter.  There were doubts that the cybersquatter would pay and Bosh’s lawyers successfully argued that domain names were personal property which could be used as partial payment for the damage award.   This ruling appears to be the first time that a court has awarded third party domains to a plaintiff.

Chris Bosh apparently plans to return the appropriated domains to the applicable athletes and celebrities, for no charge.

This proposal will be closely monitored by the trademark community as ICANN continues to move forward with its controversial proposal to exponentially expand the number of gTLDs.  The concern of trademark holders is that the task of protecting their brands online, which is already difficult enough with the existing gTLDs, will become prohibitively expensive.

The idea of the IP Clearinghouse was one of the recommendations outlined in the Final Report on Trademark Protection of ICANN’s  Implementation Recommendation Team (IRT).  At the recent ICANN meeting in Sydney, the IRT presented its report. The IRT Final Report was open for public comment until June 29, 2009.   ICANN might not make a final decision on the idea until late 2009, at which time it could potentially decide on a variation of the IP Clearinghouse, depending on the public comments that it receives.

Though it appears to be a moving target at the moment, the launch of the new gTLDs could potentially take place as early as February or March of 2010.

Sparko.ca developed a free iPhone application called BixiMobile, together with a supporting webpage located at www.biximobile.com, to assist online users with finding Bixi bike locations throughout Montreal. The application launched on Sunday; by Tuesday, Sparko had received a cease-and-desist letter from Stationnement de Montréal’s counsel directing the company to withdraw the application, and hand over the domain.  Perhaps more interestingly, it appears SdM have additionally directed Sparko to hand over the code that supports the iPhone application.

To the extent that SdM is founding their claims on trade-mark rights, they are likely relying only upon common law trade-mark rights to the word BIXI: the SdM’s application to register BIXI (filed on the basis of proposed use) remains pending with the Canadian Intellectual Property Office.  Additonally, the SdM has a number of other pending applications and a handful of registrations, pertaining to the words “Stationnement de Montréal” and other related terms.

For now, the www.biximobile.com website has been taken down, and the parties are talking settlement.  We’ll keep you posted on developments in the dispute.

Finding that it had inherent jurisdiction to make the declaratory judgment sought, and that the declaration was not purely “hypothetical” or “speculative” since it related to an actual dispute between parties, and was practically necessary for the resolution of this dispute, the Court refused the Defendant’s application to strike.

This emphasizes once again the need for public personalities (including politicians), as well as trade-mark owners, to diligently manage their online presence.