Unibet.ca CDRP (1 Viewing)

There are some lessons from the unibet.ca CDRP decision:
https://ciidrc.org/wp-content/uploads/2021/11/2021-11-30-unibet.ca_.pdf


1. Don't use parking crew or other automatic PPC landers if there are any matching trademarks
2. Don't post any PPC links if the domain name gets almost no traffic.
3. File a section 45 request with CIPO if you think that the matching trademark is not being used.
4. Register a trade name/sole proprietorship that matches the domain name, for something not infringing, if you think that there are any risks of a CDRP.
5. Don't setup SMTP servers for domains unless you are running a transparent business.
6. If there are matching trademarks, the Registrant should use the domain name in a non-infringing way in connection with a registered business or use

the domain name in Canada in good faith in association with a noncommercial activity including, without limitation, criticism, review or news reporting;

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Is it possible to do all of the above, all the time? It can get expensive if you have too many domains that match registered trademarks.

And there are blatantly stupid beliefs stated in the opinion:

1. "It is reasonable to infer, based on the above, that the Registrant was aware of the Complainant’s UNIBET Mark and anticipated the Complainant would be interested in reflecting said Mark under the .ca extension for Canada. Thus, the Registrant deliberately registered the Domain Name to deny the Complainant the opportunity to register the Domain Name, disrupting the Complainant’s business."

The trademark owner had the opportunity to register the domain name 14 years before the registrant did! The registrant probably assumed that the trademark was not in use because private gambling has been illegal in Canada.

Note: This is changing - provinces are issuing online gambling licenses to private businesses now.

2. The “contact us” form of the Domain Name creates a plausible inference that the Registrant registered the domain name, or acquired the Registration, primarily for the purpose of selling, renting, licensing or otherwise transferring the Registration to the Complainant, or the Complainant’s licensor or licensee.

Most normal websites have a contact us form or link.

Very interesting read David, thank you so much for posting it.

Absolutely invaluable information


PS. I'm glad to see you here, I think I sent you an invite quite a while ago. *THUMBSUP*

davidm said:

And there are blatantly stupid beliefs stated in the opinion:

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There always is, as the CDRP is a corporate whore mechanism, where the complainant is ALWAYS given the benefit of the doubt and their words are treated as pure 24K gold.

There is no requirement for panelists to take every statement from the complainant as the gospel truth, but CDRP panelists always do, as opposed to the UDRP, where panelists openly challenge lies and falsehoods put forward by swarmy complainants.

A CDRP complainant could state that he believed the respondent used a time machine to register said domain in bad faith, and if there was no response from the respondent, the CRP panelists would all heartily agree that this is obviously what happened.

Other points, not good to have just one panelist.

Unibet is also a tough one, because it isn't a generic word. Without knowing anything, it would have the obvious use for betting or gambling.

As the owner of the domain, you definitely wouldn't put gambling links on it, but what else could a domain owner have done with it?

The domain registrant probably assumed that the trademark was not in use because the gambling business has been illegal in Canada.

The .ca domain name owner should have filed a section 45 request to expunge the trademark.

It costs $450 in Canada
https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04950.html

Anyone can file a section 45 request after any trademark is older than 3 years old.

If the domain was worth much, I would recommend filing one now.

Interesting it was only registered October 2021. seems like a difficult one to defend the registrant, no wonder they didn't respond.

Looks like Unibet is a registered trademark in Canada, since 2003.

https://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/home

If they hadn't registered it in Canada, I could see that being a defense for the registrant.

Thanks for sharing this.

If anyone doubts the obvious corporate slant of the CDRP, then read this beauty where the generic 3-letter ACU.ca was stolen away from its rightful owner and transferred to the Assiniboine Credit Union Limited, abetted by panelist Claude Freeman.

Everything the complainant asserts is parroted back by the panelist near-verbatim, who treats the local-to-Winnipeg Assiniboine Credit Union as if they were a huge brand like Microsoft or Google, and states that the only possible reason anyone would ever register ACU.ca is because they were clearly targeting this Winnipeg-based credit union (that is renowned from coast to coast). According to the panelist, there could be no other reason to own a generic LLL, that many other companies also use as an acronym, and it's crystal clear that this CDRP decision amounts to legalized domain theft.

Even more amusing is that this "well-known brand across Canada" was spelled incorrectly (on the CIRA site and in other areas) as Assinibome instead of Assiniboine. LOL, quite the "well-known brand" coast-to-coast, huh?

https://www.cira.ca/sites/default/files/cdrp/report/acu.ca_.pdf

Looks like for ACU.ca the registrant didn't respond in time. Plus again, only one panelist.

I believe you have the option to ask for a one person or three person panel.

I'd think a well crafted defense would have had a good chance to keep this domain from the Complainant. Or at least severely embarrass the complainant and one person panel.

Unless the ACU.ca was on a ppc page with banking or credit union links, even not responding to this complaint should have been enough to win for a three letter domain that could be an acronym for anything.

ACU is an acronym for many things a simple web page could have been put up for.

domains said:

Unless the ACU.ca was on a ppc page with banking or credit union links, even not responding to this complaint should have been enough to win for a three letter domain that could be an acronym for anything.

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That's the entire point.

The panelist was falsely portraying the Winnipeg-based Assiniboine Credit Union Limited as if it were a huge national brand like Loblaws or Canadian Tire, and that you could ask anyone from Victoria to Halifax what ACU meant and they'd all answer:

"The Assiniboine Credit Union Limited, of course!"

It might be the point, but in reality you have to at least put up a defense for your best chance to keep the domain. At a minimum I would respond myself and try to get a 3 person panel.

If the domain was important or valuable to me, I'd hire a domain lawyer to write up a response. One with .ca experience.

I've done the latter and it was around $5000. The complainant read the response beforehand and there was a settlement before it went to the panel. Money well spent.

If I had somehow owned the Unibet domain mentioned here for less than a year, I probably wouldn't have responded either, given there's a trademark in Canada and what would you really use the domain for?

For ACU, I'd probably have done up a response myself after doing a little research on similar cases, I hate seeing generic names like this one get taken so easily.

domains said:

Interesting it was only registered October 2021. seems like a difficult one to defend the registrant, no wonder they didn't respond.

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Probably because they couldn’t come up with a valid argument to put in their response…

Not responding sends a signal that you don’t care or know you’re in the wrong. If that’s not the case, you’re foolish to not respond. It’s your one chance to make your defense and sometimes just planting a seed of doubt about the complainants arguments is all it takes. Furthermore, do you really want to broadcast that you’re a pushover?? The legal vultures will be circling to pick the flesh off the carcass you call your domain portfolio!

If you ever get a CDRP filed against you, reach out to me for advice.

Sure, but I have also heard people never receiving their UDRP notices or getting them too late to respond, so in cases like this, forgive me if I don't believe everything was above-board. And as even those with high-priced lawyers have found out, sometimes nothing can halt a rogue panelist from giving away a domain.

I think one reason the UDRP is more fair to the respondent (there are plenty of cases where there was no response and the panelist still made the correct decision) than the CDRP is that the UDRP is under much more scrutiny, while it seems the CDRP panelists feel they can do or say just about anything and and get away with "it".

That ACU.ca decision is pure insanity, and had a 3-letter .COM been stolen in a similar way, everyone and their dog would be publishing derogatory articles, offering free legal counsel, and petitioning ICANN to revoke that panelist from the pool. see: ADO.com UDRP.

But up here in Canada, I guess we just bend over and take it from Claude and his pals.

for those who've had multiple CDRP's, do you reply yourself or pay for legal help? If both, what % of each?

generally if it's a high valued name where I think I'm in the clear, I'd probably get legal help.

Doesn't read like the complainant, CIIDRC or CIRA followed CIRA's own rules and procedures either.


Compare this first quoted text below (from the unibet.ca decision) with CIRA's rules and procedures quoted afterwards:

1. PROCEDURAL HISTORY

This matter is conducted pursuant to the Canadian Dispute Resolution Policy (the “CDRP”) and the Canadian Dispute Resolution Rules (the “Resolution Rules”) of the Canadian Internet Registry Authority (“CIRA”).

The procedural history was set out in a letter from the Canadian International Internet Dispute Resolution Centre to the Panel:

1.1. On October 12, 2021, Cecilia Borgenstam of Silka Law filed a Complaint pursuant to the CDRP and the Resolution Rules. The identity of the Registrant is not published in the public WHOIS database; therefore, the Registrant’s name was not included in the Complaint.

1.2. CIRA was notified of this proceeding on October 12, 2021, and on the same date, CIRA transmitted by email to CIIDRC its verification response informing who is the Registrant of the disputed domain name. CIRA also confirmed that the < unibet.ca > domain name (the “Domain Name”) was placed on a Registrar LOCK.

1.3. On October 12, 2021, CIIDRC, as Service Provider, confirmed the Complainant’s compliance and commencement of the dispute resolution process.

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CIRA's "Request for Disclosure of Registrant Information - Rules and Procedures Version 1.7 (May 20, 2015)".

2. Who May Request Disclosure of Information. Requestors must be a person who complies with all of the obligations of Section 3 below.

3. Requirements. To be able to request Information, a Requestor must meet all of the following requirements:

[...]

e) The Requestor or their authorized representative must have both: (a) attempted to send a message regarding the Dispute to the Registrant through the Interested Party Contact Procedure (accessible on the CIRA website), no less than 14 calendar days prior to this request; and (b) was not able to resolve the Dispute through this mechanism. Communications through other means, or regarding other matters, do not satisfy this requirement.

https://www.cira.ca/policy/rules-and-procedures/request-disclosure-registrant-information

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It seems abundantly clear that complainants who do not know who the registrant's personal/contact information are required to first use CIRA's contact form to contact the registrant to try and resolve the issue before they can commence CDRP proceedings, and "communications through other means, or regarding other matters, do not satisfy this requirement." The complainant must also wait 14 days after trying to contact the registrant before they can request the registrant's info from CIRA.

However, the procedural history of this case reads as if: 1) the complainant just went ahead submitted their complaint without making any effort in contacting the registrant; 2) then CIIDRC just asked CIRA for the registrant's information; 3) CIRA gave CIIDRC the registrant's contact info immediately; and 4) CIIDRC then sent an email notifying the registrant of the commencement proceedings (all within the very same day)...

Am I reading things wrong, are facts missing, or is this a blatant procedural error that CIRA is facilitating against their own rules and procedures?

Esdiel said:

Am I reading things wrong, are facts missing, or is this a blatant procedural error that CIRA is facilitating against their own rules and procedures?

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After reading through a lot of the overtly pro-corporate CDRP decisions, I'm thinking it's the latter.

You see, corporations using the CDRP process simply cannot do anything wrong and their word is 24K gold, so if they do screw up or flout the CDRP, it's quickly swept under the carpet.

P.S. this is probably why I'm constantly reading about domain owners never receiving a CDRP/UDRP email or receiving it too late to do anything about - looks like someone is sucking the poles on the corporate ladder.

If someone had AssiniboineCreditUnion.ca I'd understand, but ACU.ca?
I'd be a cold day in Hell before I stop fighting that one.

mcm said:

If someone had AssiniboineCreditUnion.ca I'd understand, but ACU.ca?
I'd be a cold day in Hell before I stop fighting that one.

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I don't think it would matter, as that one was obviously a fix. Good old Claude Freeman refers to the local Winnipeg Assiniboine Credit Union Limited as if it were right up there with Canadian Tire, Loblaws, Amazon, and Walmart in terms of name recognition.

You get a panelist like Claude (just as the owners of ADO.com found out) and there is literally nothing you can do to stop the process from happening.