Update: Domain Names in Canada



The Canadian Internet Registration Authority (CIRA) has announced a new CDRP Policy and Rules, which will take effect August 22, 2011. Under the new dispute resolution procedure, the online filing system has been streamlined and some concepts have been updated to bring them in line with the UDRP. Among the other changes are:

  1. Test for what is “Confusingly Similar” The Policy uses a test of “narrow resemblance” to determine whether one domain name is confusingly similar to a trade-mark. This moves the test away from Canadian trademark law concepts, and implements a uniform standard to be used by all arbitrators.
  2. “Commercial Gain” is now a factor to determine “bad faith”.
  3. Generic Domain Names. Previously, panelists had imposed a requirement to use generic domain names in order to establish a legitimate interest. This has been removed.

CIRA’s summary of the changes can be found here  

Related Reading: Domain Names in Canada: Don’t Mess with the UFC

Calgary – 07:00 MDT

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Target vs Target: Battle of the Brands

Courtesy of TargetThere is an ongoing brand battle between the large American retailer Target and Canadian retailer Target Apparel over the Canadian rights to the TARGET trade-mark.  This is one of those disputes that is becoming more well-known than the brands themselves. Of the first dozen hits in a Google search for “Target Apparel”, 10 of them are related to the lawsuit rather than the actual products. In the case of Target Brands Inc. v. Fairweather Ltd. the US retailer applied to a Canadian court to block all use of the TARGET APPAREL brand in Canada pending the outcome of the lawsuit. In a recent decision in Canadian Federal Court, the court refused to grant the interim injuction against the Canadian retailer, saying the US company failed to prove that it will suffer “irreparable harm” if the Canadian company continues to use the TARGET APPAREL mark.  So the Canadian company will continue to use the mark while the matter goes to trial… or is settled.

One interesting element that came out of this decision was Target’s practice of licensing the little guys. Possibly in preparation for litigation, the US retailer went around to other small Canadian retailers who were using “Target” as part of their business name. Some of these users were confronted by Target and entered into license agreements where they acknowledged Target’s ownership of the TARGET mark, and were given a licence to continue using the name. This applied, for example, to Target Food Stores & Gas Ltd., which operates two small convenience stores now licensed by Target Brands Inc.  While this wasn’t conclusive in the injunction application, the court noted that Target’s practice of licensing small businesses using the TARGET mark did undercut its argument that it was harmed by the perception that Target Apparel stores were somehow linked with Target.

Calgary – 07:00 MDT

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Trademarks in the U.S.


deli-express.pngCanadian trade-mark owners can register their marks in the United States, through the USPTO . It’s important to remember that, as a Canadian business, registration of your mark in Canada does not afford any protection or trade-mark rights in the US, so a separate US application must be filed.  After application and registration of your mark, a declaration is required at the 5-year mark. This is known as a Section 8 & 15 combined declaration, which requires the trade-mark owner to file specimens to show that the mark has been used in the US. Here’s a tip: When preparing your initial trade-mark application and designing packaging and labelling for the products, it’s important to keep in mind the eventual requirement to file specimens of use, to ensure that the specimens of the mark-as-used will show use of the mark-as-registered.

Consider the case of the TTAB decision in In re E.A. Sween Company, where the applicant registered the mark DELI EXPRESS SAN LUIS for sweet rolls (shown at left). However, the specimen of use showed use of the DELI EXPRESS mark as a visually distinct mark in red, in the top left corner of the package label, and the words SAN LUIS to the right, separated spatially in such a way that the TTAB concluded that the two marks conveyed “two separate commercial impressions.” Thus, the applicant’s drawing of the mark as registered was not considered a “substantially exact representation” of the mark as used in commerce.

Contact Field Law for assistance with screening, filing and registering US trade-marks.

Calgary – 07:00 MDT 



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Trade-mark Update: Masterpiece v. Alavida (Part 1)


Last week the Supreme Court of Canada (SCC) released a significant trade-mark decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27.  It represents a major review of the legal concept of “confusion” in trade-mark law, as well as the vexing question of registered versus unregistered or “common law” trade-mark rights.

In this case, Masterpiece starting using its MASTERPIECE brand in 2001 in Calgary, Alberta, for retirement residences. However, the brand owner did not register the marks. A few years later, another company, Alavida, based in Ottawa, Ontario, applied to register the mark MASTERPIECE LIVING for similar services, and that application matured to registration in 2007, claiming use since 2006. So we have unregistered marks used since 2001 in Calgary, and a registered mark used since 2006 in Ottawa. Which one should prevail? 

The SCC agreed with Masterpiece that Alavida’s registered mark (the later one, based in Ottawa) should be cancelled, based on confusion with the earlier unregistered mark. This is because the later registered mark failed to survive the confusion analysis, on the assumption that both marks are used in the same geographic area. In reality, the marks were never used in the same region. However, for an owner of a registered trade-mark to have exclusive rights to the trade-mark across Canada, that mark cannot be confusing with another previously used trade-mark anywhere in Canada.  Even if that previously used mark is not registered.  Put another way, an unregistered trade-mark in Canada can be the basis of a challenge to a registered mark.  

Lessons for business:

  • This case makes it clear that common-law trade-mark rights are enforceable in Canada. That’s good news for brand owners. However, it’s also important to remember that with an earlier application and registration, Masterpiece would have avoided this lengthy and costly battle since their registration would have blocked the later entry of Alavida’s trade-mark application.
  • The importance of effective trade-mark searching is critical to a successful trade-mark application. Consider clearance searches and an availaibility opinion as part of your risk mitigation strategies for the launch of a new brand, or the registration of a long-standing unregistered mark.

Calgary – 07:00 MST

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Domain Name Update: .xxx Blocking Process


Canadian trade-mark owners take note: The .XXX top-level domain is a new sponsored TLD designed for the adult entertainment industry. It is expected to launch in 2011. Trade-mark owners can make use of a blocking procedure to ensure that their trade-marks are not reflected in .XXX domain names. The opt-out process blocks names at the .XXX registry so these names cannot be registered by others. This will be available to trade-mark owners for a fee during the “Sunrise B” period. This period will commence in September 2011 for a period of 30 days. As an example, Microsoft might make use of this procedure to block the registration of “microsoft.xxx” as a domain name. For further details see: xxxempt.com and see this related article IPRota White Paper on xxx Launch.

Contact the Field trade-mark team for assistance on taking advantage of the blocking process. 

Calgary – 07:00 MDT 

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Domain Names in Canada: Don’t Mess with the UFC


Courtesy of UFCIt’s playoff season in Canada, and some hockey fans cheer when the players brawl. The good folks at UFC have simplified things by doing away with the hockey and all the other distractions, and just giving the fans what they want: big guys hitting each other. 

A Kelowna, BC, man registered the domain name ULTIMATEFIGHTINGCHAMPIONSHIPS.CA and seven other variations using the .US, .INFO and .BIZ extensions.  Zuffa LLC, the company that owns the UFC trade-marks, approached the registrant with an offer to settle. When the man refused, Zuffa filed a complaint under the CDRP – the dot-ca dispute resolution procedure. In the recent decision in Zuffa LLC v David Bruce [PDF], the panelist had to decide if the domain name had been registered “in bad faith” which is typically one of the more difficult elements to prove. 

In this case, the registrant had admitted in email correspondence with Zuffa that he hoped to make a great deal of money from the registrations, that he was well aware of the UFC brand, and he had registered other offending domain names. The panelist had no trouble concluding that this qualified as “bad faith”.  The domain name was ordered transferred to the trade-mark owner.  That’s one down, seven to go. 

Calgary – 07:00 MDT

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Descriptive Trade-marks in Canada


Who can get a monopoly on a particular word? Is it fair for someone to get a trade-mark for the word TEACHERS’? Under Canadian trade-mark law, there’s nothing stopping a company from obtaining a trade-mark over almost any word, as long as it meets the registration criteria. One of those criteria is that the word cannot be descriptive of the product or service that’s being provided. In Ontario Teachers’ Pension Plan Board v. Canada (Attorney General) 2011 FC 58, the Federal Court decided that the word TEACHERS’ is not registrable by the Ontario Teachers’ Pension Plan. The court decided that the word TEACHERS, describes an “intrinsic character of the administration, management and investment of a plan/fund for teachers” and so the word should be available for others to use. “Descriptive words,” the Court confirmed, “are the property of all and cannot be appropriated by one person for their exclusive use.” 

Lessons for business?

  • Remember: This doesn’t mean that all adjectives are ineligible for registration. The word SWEET (TMA687821) is a registered trade-mark in Canada for “Plant nutrients and supplements namely plant food” because the word does not describe the character or quality of the product. However, the word SWEET for, say, candy or refined sugar would be clearly descriptive.
  • If you are considering a new brand, get an advanced registrability search from a qualified trade-mark agent. They can advise on both the availaibility (whether someone else has an identical or similar mark) and registrability – including whether the mark is likely to be considered clearly descriptive or deceptively misdescriptive.

Related Reading: Generic Domain Names in Canada  

Calgary – 07:00 MST

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Summer Break


ipblog.ca will be taking a break over the summer. We’ll be back in the Fall to pick up developments such as:

Have a good summer. 

Calgary – 09:00 MT

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Internationalized Domain Names – Part 2

In late 2009, ICANN (the Internet Corporation for Assigned Names and Numbers) announced plans to implement internationalized country-code top-level domain names (ccTLDs) using non-Latin characters. See our previous post: Internationalized Domain Names.

Four ccTLD requests are moving along the process and are now ready for the final step in the process, the application for string delegation. The four countries and the corresponding internationalized ccTLDs are:

SA Saudi Arabia


AE United Arab Emirates
EG Egypt
RU Russian Federation

Canadian trade-mark owners who have a brand presence in these jurisdictions are advised to monitor developments to ensure that their domain name and trade-mark protection strategies are harmonized when the new top-level domains become active.  Contact us for advice on trade-mark and domain name strategies.

Related reading: IDN ccTLD Fast Track Process.

Calgary – 10:00 MST

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Google vs. Groovle

Even Google can’t win them all.  In a recent domain name arbitration decision, Google Inc. v 207 Media, a small Canadian company has prevailed against a challenge by almighty Google Inc.  Google objected to the registration of the domain name GROOVLE.COM, claiming that it was too close to Google’s own famous brand name.  In a domain name arbitration, a complainant must prove 3 things:

(1)   the domain name is identical or confusingly similar to the complainant’s trademark ;
(2)   the person who registered the domain name has no rights or legitimate interests in respect of the domain name; and
(3)   the domain name has been registered and is being used in bad faith.

In this case, the arbitrator decided that Google failed on the first count. GROOVLE was found to be not confusingly similar to Google’s trade-mark. This follows an earlier decision where Google challenged the domain name FROOGLES.COM and lost (Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum, July 18, 2004)).

The real dispute was not so much the similarity of the names (Google has better things to do than chase every single misspelled variation of its domain name).  It was rather the use by Groovle of Google’s Custom Search Engine program.  This program permits users to embed a Google search box into their own site; Groovle took this one step further and permitted users to essentially customize their own search page, using Google’s engine, but displaying Groovle’s brand.

Calgary 10:00 MST

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Domain Name Decision

In a story that reads like a law-school exam, a company with a German trade-mark took a California man to arbitration to try and win the domain name project.me, which is registered under the rules for the country code top-level domain for Montenegro.  iPhone app developer Project.me (the German company) recently lost at arbitration before the World Intellectual Property Office Arbitration and Mediation Centre.  The decision project.me GmbH v. Alan Lin Case No. DME2009-0008 is noteworthy for several reasons:

1. The German company failed primarily because the domain name in question was applied for before the company was incorporated or the trade-mark was applied for. The California registrant who initially registered the domain name couldn’t have registered it to take advantage of the German company’s brand, since the German company didn’t exist at the time.

2. Domain name arbitration decisions typically ignore the suffix (.com, .ca or in this case .me) but this decision notes that “a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.”  Future domain name disputes may take this reasoning into account.

3. This case illustrates the international nature of intellectual property disputes and shows why it’s important to get advice on trade-marks, branding, and domain name strategies.

Calgary – 11:00 MST

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Internationalized Domain Names

ICANN announced on Friday that it has approved – in principle – the creation of domain names made up of non-Latin characters. The protocols that run today’s internet recognize domain names and internet addresses made up of numbers and A-to-Z Latin characters. ICANN’s “Fast Track Process” will launch on November 16, 2009, permitting countries to apply for non-Latin domain names: think Korean, Chinese, Arabic and Hindi. Once the technical wrinkles are ironed-out (and web-browsers catch up), the new internationalized domain names will be implemented, and registries will start accepting registrations.

For Canadian businesses, this development is worth watching, as it presents an opportunity to carve out a local presence in overseas markets.  

Calgary – 10:45 MST

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Canadian “Reverse Hijacking” Decision

Two Canadian domain name decisions:

  • In the saga of the domain name forsale.ca, another chapter has been written.  This domain name was the subject of an earlier battle between Globe Media and the then-owner, Dawn Internet (Globe Media International Corporation v. Dawn Internet Telephony Systems Inc, CIRA Decision 00059 (2006).  Globe Media failed in that dispute because any rights it claimed arose after the original registration of the domain name in 2000.  The domain name registration then lapsed, and was snapped up by a new registrant in January, 2009.  Globe Media offered to buy the domain name for $5,000, but by then the domain name had been flipped and sold to Bonfire Development, Inc. for $30,000.  Globe Media launched this complaint in February.  The panel found that the domain name “is so clearly generic that its registration cannot be seen as being registered in bad faith.” The complaint was dismissed. Further, the panel awarded costs of $5,000 against Globe Media for “reverse domain name hijacking“, the first award of its kind. Case Decision


  • At first glance, this is a case determining that Americans cannot hold dot-ca domain names.  In a dispute over the domain name clearlylasik.ca, the complaint was summarily dismissed because the US complainant, who claimed rights to the mark ‘Clearly Lasik’ in Canada and carries on business in Canada under that name, failed to satisfy the Canadian presence requirements.  In fact, it appears the complainant does hold a registered trade-mark for CLEARLY LASIK, but failed to submit evidence of this.  The complaint would have likely succeeded since there was no response.  The disputed domain names now resolve to the Complainant’s site, suggesting that the matter was likely settled after this decision was rendered. Case Decision 


Calgary – 10:30 MST

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Google AdWords and Trade-marks

A US appeals court has permitted an attack against Google’s (in)famous AdWords program by allowing a trade-mark infringement lawsuit to proceed.  The lawsuit was brought against Google by Rescuecom Corp., a computer service and support company.  Rescuecom alleged that Google’s AdWords program (its practice of selling the Rescuecom trade-mark to other advertisers, thereby triggering the appearance of a competitor’s advertisements and links when a Google user launched a search of Rescuecom’s trade-marks) was a violation of trade-mark rights.

On April 3, the US Second Circuit Court of Appeals ruled that Rescuecom’s lawsuit could proceed.  The outcome of this suit will be closely watched.

Related Reading: Trademark Infringement and Google AdWords  

Calgary – 14:00 MST

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Olympic Lawsuits

VANOC, the organizer of the 2010 Olympics, has launched another lawsuit in the lead-up to the 2010 Winter Games, this time to block ticket scalping. The suit filed in March against Coast2Coast Tickets alleges trade-mark violations in the effort to curb unauthorized ticket resales. The claim alleges the ticket reseller is using protected Olympic marks to give the public the impression that there is some affiliation with VANOC.  Over the past few years VANOC has also pursued trade-mark remedies against:

  • a domainer who registered the domain names vancouver2010.org, vancouver2010.net, vancouverwhistler2010.net and vancouverwhisterler.com ;
  • the owners of a business calling itself “Whistler Olympic Real Estate” and operating a website using the Internet domain name  ; and
  • a distributor, Teepee Handicrafts Ltd., who sold and distributed merchandise bearing marks such as VANCOUVER 2010 and 2010 VANCOUVER WHISTLER without the permission of VANOC  .

Olympic litigation is likely to increase over the next year, as ambush marketing and unauthorized sales heat up in advance of the games.

Related Reading: VANOC Ticket Broker Suit Raises Concerns about Reach of Official Marks

Calgary – 10:30 MST

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Generic Domain Names in Canada

When are domain names so descriptive or generic that they can’t function as a trade-mark? 

A Montreal lawyer registered and used the domain name canadavisa.com for immigration law services.  He then challenged the owner of canadavisa.ca claiming that the use of the dot-ca domain name for similar services would constitute bad faith contrary to the dispute resolution policy.  In a recent arbitration decision Cohen v. 3824152 Canada Inc. the panel decided that CANADA VISA cannot function as a trade-mark for services related to obtaining visas for Canada, since under trade-mark law both CANADA and VISA would have to be disclaimed as being purely descriptive of the services.  Since the domain name could not function as a “mark” under the rules, the complaint failed. 

Compare this with the recent complaint by a Toronto realtor who used yourcommunityrealty.com.  The realtor complained about the registration of yourcommunityrealty.ca, which was directed to a page featuring ads for competing realtors.  Is YOUR COMMUNITY REALTY generic for real estate services?   In the decision Risi v. Fattahi, the panel relied on the complainant’s Canadian trade-mark registrations for YOUR COMMUNITY REALTY.  Because she had chosen a slightly more distinctive mark, and had taken the step of registering trade-mark rights several years before, the complainant avoided the problem of proving distinctiveness or acquisition of secondary meaning (the problem which foiled the complaint in the Canada Visa case).  The complaint was successful.

In the recent Trade-mark Opposition Board decision in London Drugs v. Total Care Pharmacy (April 28, 2008), the board refused to permit the registration of the proposed mark CROSSBORDERPHARMACY.COM for an online pharmacy because the mark was clearly descriptive.   

There are several lessons for business:

  1. A domain name does not need to be distinctive to be successful as a website address (canadavisa.com reportedly enjoyed popularity as a site), but without a distinctive element, the domain name cannot function as a trade-mark and this will always limit enforcement options in the case of infringement or domain name disputes;
  2. Trade-mark registration can be a very useful tool – in the Community Realty case, the complainant could likely have pursued a trade-mark infringement case, but the domain name arbitration was cheaper and quicker, and the trade-mark registration proved critical for success in that venue;
  3. Defensive domain name registrations are also good practice: if the owner of canadavisa.com had registered the dot-ca and other variations as a defensive measure, then the lack of distinctiveness would be irrelevant.

Related post: Update: Generic Trade-marks 

Calgary – 11:00 MST

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Domain Name News

A few notes from the internet and domain name world:

  • CIRA’s revised WHOIS policy has been criticized by Michael Geist  and others for its “backdoor access for special interests”.  I have to disagree with Prof. Geist on this one.  The ability of trade-mark owners to be able to defend against cybersquatters and trade-mark infringement is a business reality, no different from the ability of someone to see a business license at a store, or to conduct corporate records searches to see who owns a company.  The criticism of the new WHOIS policy is misplaced. The policy strikes a balanced approach between the interests of registrants and brand owners (who are made up of both small local businesses and multinational corporations);
  • I don’t often put in a plug for summer sales, but reliable Canadian Registrar webnames.ca is offering new domain name registrations for 50% off , until August 31, 2008.  The promotion applies to all domain extensions: .CA, .COM, .ORG, .MOBI, .NET, .INFO, .BIZ, .US, .CN and .ASIA.  This provides an opportunity for trade-mark owners to buy up variations of their core marks, to fence in their online brand and pre-empt cybersquatting disputes;
  • Lastly, the new dot-tel top-level domain is due to be launched at the end of this year, with the Sunrise Period commencing December 3, 2008.  Full particulars of the new domain and the launch schedule can be found here.


Calgary – 12:30 MST

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Domain Name Update

There is a news story circulating that internet regulators are permitting domain names with an infinite variety of extensions – so users would not be limited to dot-com, dot-ca or the other 21 extensions which are currently approved.  The piece I heard made it sound as if internet users could wake up tomorrow and start typing in their own random top-level domain suffixes. 

To clarify: It’s true that ICANN (the Internet Corporation For Assigned Names and Numbers) has approved a proposal to widen the number of extensions, and to permit extensions to be expressed in languages other than the roman alphabet.  However, this will be a long time in coming.  Organizations interested in introducing a new extension must apply to have it approved and implemented.  And ICANN is not expected to even accept applications until mid-2009, then those new extensions that are approved are not likely to be rolled-out until 2010 at the earliest. 

As usual, trade-mark owners and brand managers need to keep abreast of these developments and make strategic decisions about where to focus their branding efforts.  But this particular development is a few years away.


Calgary – 14:00 MST

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Domain Name & Defamation Case

A disgruntled ex-employee registers the dot-com version of the employer’s dot-ca domain name.  Then, just before leaving on vacation out of the country, the ex-employee directs the dot-com domain name to a gay porn site.  The employer sues for damages.

In a recent judgement (Inform Cycle Ltd. v. Draper, 2008 ABQB 369), the Court has awarded damages against the ex-employee for passing-off and defamation, to the tune of $15,000.00.  The case is interesting for a few reasons: first, it is one of the few decisions dealing with both online corporate defamation (defamation of business reputation on the internet) and domain name issues.  And it is interesting for the summary way in which the Court concluded that damages were appropriate.

In the B.C. case of Crookes v. Yahoo, the Court disposed of an online defamation claim by reasoning that there was no evidence that the alleged defamatory material was accessed by someone in B.C.  “Publication is an essential element for an action in defamation,” said the judge. “In this case … [t]here is no evidence anyone read the material in British Columbia.”

Contrast that with the analysis in the Inform Cycle case: “There is no record of the number of people who were forwarded to the gay pornographic website…the people referred to the ‘.com’ site over that 16 day period were people who had made an error by choosing ‘.com’ instead of ‘.ca’. We do not know how many people made that error. We do not know how many actually thought that the referral to the porn site was deliberate rather than a computer or internet glitch. We do not know if anyone, or how many, actually believed that Inform was involved in the porn site or business.” (emphasis added) Despite those apparent gaps in the evidence, the Court had no problem concluding that defamation had occurred, and that damages were appropriate.  The difference might be explained (at least partly) by the fact that the alleged defamatory comments in the Crookes case were made in a members-only discussion forum. It’s likely that the nature of the site where the domain name was directed also has something to do with it.  It is clear that further clarity on these issues is required.

Calgary – 15:30 MST

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Dot-Ca Update

A new decision and a new policy:

  • In a recent decision (Enterprise Rent-A-Car Company v. David Bedford ), Enterprise won handily in its dispute over the bank of names registered by Mr. Bedford, a BC domainer. The dozen domain names (enterpriseautorental.ca, enterprisecarrentals.ca, enterprisecanada.ca, etc.) were used with a pay-per-click advertising scheme and this decision provides a useful precedent for trade-mark owners, along with the panelist’s finding that the test under the CDRP is one of resemblance, not confusion.
  • CIRA, Canada’s official dot-ca domain name registry, is introducing changes to the WHOIS policy, starting in June 2008.  Under the new policy, private information about individual registrants will no longer be accessible through the dot-ca WHOIS database. The WHOIS information of corporate registrants will be displayed by default. This means that in order to contact an individual owner of a dot-ca domain name – say, for the purposes of proposing a transaction, or complainaing about trade-mark abuse – a new “administrative process” will be used.  This new process is under development, but it is expected to be an online form which will automatically forward correspondence to anonymous registrants, via CIRA. 


Calgary – 10:30 MST

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