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 clothing line in question features various items in the national colours of Canada, the U.S., Sweden and Germany. Notably, the Canadian hoodies feature gold zippers while the zippers in the colours of other countries have silver zippers. Lululemon lost out to the Hudson’s Bay Company in its bid to be the official apparel supplier to the Canadian Olympic team for the Summer and Winter Games during the period from 2006 to 2012.

Readers of the Knowledge Bytes newsletter will be aware of the legislative hammers that are at VANOC’s disposal to enforce its trademark rights against both would-be infringers and ambush marketers alike. These include the Olympic and Paralympic Marks Act, which contains lists of specific words that either can’t be used at all, or that can’t be used in combination with other specific words–for example the combination of “Vancouver” and “2010″.

Lululemon, for its part says that it carefully did its legal homework and selected a brand that doesn’t fall afoul of any legislative prohibitions. VANOC appears to have conceded this point, indicating that it will use non-legal tactics to attempt to persuade Lululemon to back off.

As the start of the Winter Games quickly approaches, VANOC will no doubt have its hands full with other creative ambush marketing ploys. VANOC has published spectator guidelines about what will not be tolerated at the Winter Games event venues, including “Ambush marketing of any kind, distribution of leaflets, pamphlets and non-approved publications, promotional material and wearables”.

The IDN Fast Track launched on November 16, 2009.  As of that date, nations and territories can apply to ICANN for Internet extensions reflecting their name in characters from their national language.  Criteria for acceptance include government and community support and a stability evaluation.  If applications meet the criteria, successful national and territorial applicants will be approved to start accepting registrations.  It is expected that use of non-Latin based scripts may begin sometime in 2010.  ICANN states that as of November 16th they have already received six requests from countries/territories representing three different languages.

Perhaps jumping the gun a bit, the Russian domain name registry .RU is already accepting sunrise applications for Cyrillic character trademarks for the Cyrillic translation of .RU, although  ICANN has not yet granted this extension.  DotAsia announced that it plans to release IDN registrations in 2010.

While the launch of IDNs is welcome news to those who don’t use Latin characters, brand owners will want to consider carefully how best to obtain protection of their trademarks with these new IDNs. For example, careful consideration should be given to exactly how a trademark is translated into the foreign characters and also whether a registration of a transliteration or a  phonetic interpretation of the trademark is warranted.

Under the study, all UDRP cases filed between January 2000 and May 2009 with the two major UDRP providers were analyzed.  The study found that more than $220 million was spent on UDRP proceedings in the period, but proactive registration of domain names would have cost only $1.1 million – a potential savings of $219 million.

Interestingly, CSC’s study indicates that of the domains that were reclaimed by brand owners, almost 4,000 have been subsequently lapsed and are available again for registration.  As well, apparently 3,000 domains that were reclaimed lapsed and then were re-registered – sometimes by third parties.

The results of the study underscore the importance of proactive registration and brand management in saving both time and money.

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.

In an attempt to deter username squatting, Facebook has put several restrictions in place: (1) only users who had accounts as of June 9 are eligible to register a personalized username (those who registered after must wait until June 28), (2) only one username can be selected per personal profile, (3) usernames are not transferable to other accounts, (4) Facebook can remove or reclaim any username at any time for any reason, and finally (5) Facebook will maintain a list of “reserved” usernames of certain trade-marks which will not be available for registration.

This last stipulation may be of particular interest to trade-mark owners.  Facebook has provided trade-mark owners with a form to submit their trade-marks for inclusion on a list of “reserved” usernames which will not be available for registration.  The form asks for a trade-mark registration number which suggests that Facebook only plans to protect registered trade-marks.  It is also unclear whether the form is intended to be used for Canadian (and other) trade-mark registrations, as well as US registrations.

Although there is also a mechanism for reporting infringement of intellectual property rights by a username that has been issued, a proactive approach is likely more efficient.   If you would like to take full advantage of Facebook’s list of  “reserved” usernames, you will have to act quickly: username selection opens to account holders this Saturday, June 13.

We should note, just to add a bit of perspective to this, that Myspace, Twitter and other social networking websites already permit personalized usernames and don’t have similar restrictions in place about the use/reservation of third party trademarks.  So far, such practices don’t appear to have led to widespread abuses or infringement of third party trademark rights.

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.