Domain Name Disputes in Charitable and Not-for-profit Sector

Many may remember the legal battles between the World Wrestling Federation and the Worldwide Fund for Nature, which is better known as the World Wildlife Fund. One is an entertainment company that is known for professional wrestling and the other is an international organization whose mission is to “conserve nature and reduce the most pressing threats to the diversity of life on Earth”. At dispute was the brand “WWF”. After several high-profile lawsuits and negotiations, the World Wrestling Federation relented and is now known as World Wrestling Entertainment (or WWE).

Unfortunately, many not-for-profit and charitable organizations may not have the resources that the World Wildlife Fund had to protect and defend their brand or intellectual property. That is why the November 2019 announcement that the Canadian International Internet Dispute Resolution Centre (CIIDRC) would start accepting applications for resolving domain name disputes was welcome news for not-for-profit and charitable organizations. In 1999, the Internet Corporation for Assigned Names and Numbers (ICANN) established the Uniform Domain Name Dispute Resolution Policy (UDRP) and set out the legal framework for resolving domain name disputes between a domain name registrant and a third party. The CIIDRC becomes only the sixth UDRP authorized service provider that is specifically set up to resolve disputes.

Prior to the establishment of the CIIDRC, not-for-profit and charitable organizations were limited to protecting only their country code top-level domain (.ca) by complying with the Canadian Internet Registration Authority’s Dispute Resolution Policy. Now, domain name disputes that have generic top-level domain names (e.g., .com, .org, and .net) will also be resolved in Canada. Utilizing alternative dispute resolution principles, the process for complainants is reasonably straightforward. To be successful, the Complainant must prove three key elements:

  • The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
  • The opposing party has no rights or legitimate interests in respect of the domain name in dispute; and
  • The domain name in dispute has been registered and is being used in bad faith.

Once the complainant has satisfied these three elements, the remedies are limited to the cancellation of the registrant’s domain name, or the transfer of the registrant’s domain name registration to the complainant. For not-for-profit and charitable organizations that can demonstrate a Canadian presence, the establishment of the CIIDRC provides a cost-effective alternative to initiating legal action to protect their intellectual property rights concerning domain names.

Written by Patrick Gauch, a second year Master of Laws (Business Law) Candidate at Osgoode Hall Law School and a Certified Association Executive working in the not-for-profit sector.

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