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.

For those of you who missed it, Psion is a mobile computing device manufacturer whose head office is located in Mississauga, Ontario, Canada. Psion holds registrations for the trade-mark NETBOOK in Canada, the US, in Singapore, Hong Kong and in the CTM system.

In December, Psion sent letters to manufacturers and retailers in an attempt to “affirm” its NETBOOK trademarks. To this end, the letters requested the recipients to stop using NETBOOK to describe ultra-portable laptop computers.  Psion followed up with similar correspondence to journalists and bloggers in January.

In response, the blogosphere took umbrage with what it saw as an unjustifiable attempt to, in one blogger’s words, “hijack the netbook industry using registered trademarks.”  A grassroots campaign followed, including the development of websites geared towards “saving” the term from Psion’s exclusive use, and battles ensuing on Wikipedia between detractors and supporters of Psion’s efforts.

The battle escalated with Intel’s February 16 decision to initiate a US Federal Court action against Psion, together with Dell’s February 19 decision to file a petition in the USPTO to cancel Psion’s U.S. NETBOOK registration.  Psion has since counter-sued Intel–the owner of netbook.com, which resolves to this Intel page–for cybersquatting, unfair competition and unjust enrichement.

In Canada, the question of whether or not Psion’s NETBOOK registration would survive a challenge hinges around questions of distinctiveness.  As regular readers of the Canadian Trademark Blog know, distinctiveness in relation to a trademark means that the mark actually distinguishes the wares or services in association with which it is used by its owner, from the wares and services of others, or has adapted so as to distinguish them.

Only a distinctive trademark will allow a consumer to identify the source of the goods.  Loss of distinctive character means the loss of protectability of the trademark in question.  The owner loses the exclusive right to the use of the mark, and the mark becomes publici juris.

While the debate rages on online, we will not actually know the status of Psion’s rights in Canada unless it attempts to exercise them against a third party, or some third party challenges the registration.  While we are unaware of any Canadian court actions that have been initiated to expunge Psion’s registration for lack of distinctiveness, we do know that a competitor, the Taiwanese computer manufacturer Micro-Star Int’l Co., Ltd. (“MSI”) has filed a trademark application for WIND NETBOOK.

It is conceivable that Psion will rely upon its registration to oppose MSI’s application if and when it is advertised.  While an Opposition Board has no jurisdiction to amend or otherwise challenge a registered trademark, the questions about the distinctiveness of Psion’s trademark will pose certain challenges to it, should it decide to oppose MSI’s application.

We will keep you posted on material developments in this dispute as they unfold.

The website now resolves to a site offering details on how to get prescription drugs without a prescription.  Exactly who holds the domain name is unclear, as this information has been privacy protected by the registrar, Namespro Solutions Inc., at the request of the owner. Under the current CIRA privacy policy, personal information of owners who are individuals is permitted to be cloaked, even if the domain name links to a commercial site.

Mr. Ashfield could potentially try to regain ownership and control of the domain name under the Canadian Internet Registration Authority (CIRA) Dispute Resolution Policy (CDRP) One issue, however, may be his ability to prove rights in his name as a “Mark” as defined by the CDRP policy. A CDRP proceeding allows for the transfer of a domain name from a registrant to a complainant if the complainant can prove that (1) the domain name is confusingly similar to a Mark in which the complainant has rights, (2) the registrant does not have a legitimate interest in the domain name, and (3) the registrant has registered the domain name in bad faith (as defined under the policy).

Cases such as this highlight that public personalities, including politicians, as well as trade-mark owners are encouraged to pre-emptively register their names or trade-marks as domain names with multiple top level domains (such as .ca and .com).  As Mr. Ashfield has no doubt discovered, an ounce of prevention is worth a pound of cure.

For intellectual property owners, those requirements are numerous, including that the Requestor must have a good faith “Dispute” (as defined) in process with the Registrant, the Requestor must agree to provide CIRA with whatever supporting documentation CIRA may require from time to time, the Requestor must have attempted to send a message to the Registrant through the Interested Party Contact Procedure no less than 14 days prior to this request with no resolution of the Dispute.

The term “Dispute” is exhaustively defined and requires that a Requestor reasonably believe in good faith that a Registrant’s domain name and/or its content (presumably this reference to content is to content of a website that the domain name in question links to, rather than the content of the domain name itself) infringes the Requestor’s registered Canadian trademark, copyright or patent or registered Canadian (Federal or Provincial) corporate, business or trade name. A Dispute can also involve the use of the Requestor’s personal information without their knowledge or consent to commit identity theft.