Domain Name Disputes

Disputes are normally started with demand letters or cease-and-desist letters. These letters are sent to you from the trade-mark owner or its lawyers and usually threaten legal action if you do not cease using and/or transfer the domain name to the trade-mark owner.

Assuming that you do not reach a settlement with the trade-mark owner, domain name disputes are typically resolved in one of two ways: (i) litigation in court or (ii) arbitration. Depending on the type of dispute, court proceedings may be brought in the Federal Court of Canada, a provincial superior court or in a U.S. court. Arbitration of a domain name dispute regarding a .com, .net, .org domain name, among others, would be resolved under the Uniform Domain Name Dispute Resolution Policy (UDRP). Arbitration of a .ca domain name would be resolved under the Canadian Domain Name Dispute Resolution Policy (CDRP). These policies are described further below. Other types of domain names may have their own arbitration rules for deciding disputes.

• Canadian Legal Information Institute: with links to the Federal Court of Canada and provincial superior courts' websites
• Internet Corporation for Assigned Names and Numbers (ICANN): background information regarding the UDRP, including the text of the UDRP itself
• Canadian Internet Registration Authority (CIRA): background information regarding the CDRP, including the text of the text of the CDRP itself
• Text of the Anti-Cybersquatting Consumer Protection Act

The basis on which your domain name can be taken away from you depends on whether a lawsuit is filed or arbitration under the UDRP or CDRP is pursued. If the complainant files its complaint under the UDRP or CDRP, then special rules will be applied to resolve the dispute. These are discussed below. A court action in a Canadian court would likely be based on trademark infringement under the Trade-marks Act, or on the common law action of passing-off, described below. If the complainant also complains about the content of a website at your domain name, then the lawsuit might also be based on defamation or copyright infringement, depending on the facts of the case. A claim against you could also be based on the U.S. Anti-Cybersquatting Consumer Protection Act.

• Trade-marks Act, R.S. 1985, c. T-13.
• Canadian Intellectual Property Office, A Guide to Trade-marks
• Canadian Trade-marks Database: searchable database of trade-marks in Canada

The Canadian Trade-marks Act defines a trade-mark as a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others." In general terms, trade-marks are typically words, logos, designs, slogans or other marks that businesses use to brand their business and its products. For example, CANADIAN TIRE is a registered trade-mark used by Canadian Tire Corporation Limited in Canada. However, that company also uses the registered trade-mark CANADIAN TIRE WARRANTY PLUS in association with a specific category of warranty services that it provides.

  Some trade-marks are comprised of ordinary words, like CANADIAN TIRE. Others are invented terms used as trade-marks to distinguish the goods and services that a company provides from those of other companies. EXXON is an example of an invented term used as a trade-mark.

Generally speaking, a trade-mark owner must show that you used their trade-mark or a confusing trade-mark in Canada. Merely showing that you registered a domain name that was similar to their trade-mark may not be enough. Section 6 of the Trade-marks Act sets out a list of factors that a court will consider in deciding whether two trade-marks are confusing:

1. The inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known - generic or descriptive trade-marks may receive less protection, unless they have become widely known through extensive use or through a long period of use.
2. The length of time the trade-marks or trade-names have been in use - the longer a trade-mark has been in use, the more protection it may receive.
3. The nature of the wares, services or business - confusion may be less likely when expensive wares are involved because consumers may be expected to undertake a careful inquiry as to what they are purchasing
4. The nature of the trade - if the wares are sold through similar channels of trade (e.g. convenience stores, bike stores), then the likelihood of confusion may be higher.
5. The degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them - this factor compares the trade-marks side-by-side with greater similarity leading to a greater likelihood of confusion.

Courts are required to consider each of the factors above, along with all the surrounding circumstances. As one example of where two identical trade-marks may not be confusing, you might use the trade-mark ACME in association with a website that sells tools to construction companies. In this circumstance, your trade-mark is unlikely to be confused with ACME used by another company in association with chocolate bars.

Trade-mark owners may obtain a court order requiring you to pay money for damages that your trade-mark infringement caused. Your domain name might be taken away from you and you might be prohibited from registering any similar domain names in future. You may also be liable to pay legal costs if you lose the case.

Passing-off is similar to trade-mark infringement but does not involve a registered trade-mark. In general terms, passing-off is an attempt to profit from the reputation of an established mark by representing your goods as the goods of another. A passing-off action may be commenced against you on the basis of common law rights to a mark acquired through use in a particular geographic area, but without actual registration. In the domain name context, Canadian courts have held that mere registration of a domain name can constitute passing off.

• Law Society of British Columbia v. Canada Domain Name Exchange Corp., [2002] B.C.J. No. 1909 (B.C.S.C.)

In order to prove a passing-off claim, the trade-mark owner must show three things:(i) the existence of goodwill in the trade-mark they have been using; (ii) the deception of the public due to a misrepresentation by the person passing-off; and (iii) actual or potential damage to the trade-mark owner.

• British Columbia Automobile Association v. O.P.E.I.U., Local 378, 2001 BCSC 156 (B.C.S.C).

The remedies available under a passing-off claim are generally the same as for a trade-mark infringement claim.

ACPA is the Anti-Cybersquatting Consumer Protection Act, a U.S. law which protects owners of famous or distinctive trade-marks. It provides owners of such marks a civil cause of action against any person who in bad faith registers, traffics in, or uses a domain name that is identical to or confusingly similar to a distinctive mark or name, or is identical to, confusingly similar to, or dilutive of a famous mark. ACPA is similar in its requirements to the UDRP discussed below.

An ACPA claim may be brought against the registrant of a domain name where the registrant has sufficient contacts with the U.S., even if they are located in Canada. However, ACPA also contains a powerful provision called an "in rem" action which permits lawsuits to be filed in the U.S. against domain names themselves, rather than registrants. That provision avoids jurisdiction problems and means that a lawsuit can always be brought against the domain name in the U.S. Because of this extraordinary power, the only remedy that can be obtained by suing the domain name is the cancellation or transfer of the domain name. In contrast, where the plaintiff sues the registrant (rather than the domain name), typical court remedies like injunctions, fines and costs would be available.

If you are sued personally under ACPA, it can be cause for serious concern given the possibility of a court judgement being issued against you. You should immediately assess whether you have contacts or assets in the U.S. and contact CIPPIC or a lawyer as soon as possible. If your domain name, not you personally, is sued, then the risk to you is less serious - the worst that could happen is likely that your domain name could be taken away from you.

• ChillingEffects.org, "FAQ About ACPA": materials to assist you if you find yourself or your domain name being sued under ACPA

The UDRP is a dispute resolution policy which is incorporated into all domain name registration agreements for generic top level domains (.com, .net, .org, .biz, .info and .name), and those country code top level domains that have adopted the UDRP on a voluntary basis. The UDRP sets out the procedural and substantive rules for resolving cases of bad faith domain name registrations quickly and in a cost-effective manner. Proceedings under the UDRP are much faster and less expensive than proceedings in court and can be defended without hiring a lawyer.

• Internet Corporation for Assigned Names and Numbers (ICANN): background information regarding the UDRP, including the text of the UDRP itself
• ICANN, Searchable database of UDRP decisions
• The UDRP Database: advanced search capabilities for UDRP decisions, including basic information regarding the UDRP

If the trade-mark owner pursues a complaint under the UDRP, their complaint will be filed with a dispute resolution provider (DRP). The DRP is an ICANN-approved entity that maintains a roster of panelists who decide disputes. Once the DRP ensures that the complaint is meets the necessary formalities, the DRP will forward the complaint to you and the clock will start ticking. You have 20 days to file a response. If you do not respond to the complaint, the dispute will be resolved based solely on the information provided by the complainant.

Disputes are resolved by a panel of either one or three arbitrators. The complainant can choose three panelists if they like. However, if the complainant chooses one panelist to decide the complaint, you will have 20 days to agree or request a three-person panel. If you choose a three-person panel, you will have to pay half the cost. Statistically, it is better if you choose to have the dispute heard by a three-person panel.

There is no in-person hearing. The panel makes a decision in respect of the dispute based on the written submissions and documents submitted by both parties. The panel will apply the provisions of the UDRP and the UDRP Rules. The UDRP Rules deal mainly with procedural matters. If the panel orders cancellation or transfer of the domain name, you may bring a court action within 10 days to stop the cancellation or transfer. In fact, under the UDRP both you and the complainant are free to commence a court action regarding the domain name at any time.

• Rules for the Uniform Domain Name Dispute Resolution Policy
• UDRPinfo: Michael Geist's UDRP information page, including statistical information about UDRP decisions and panelists
• ICANN, Approved Dispute Resolution Providers for the UDRP
• ChillingEffects.org, "Documenting Your Domain Defence": useful information on some steps to take in defending a UDRP proceeding

Under the UDRP, a trade-mark owner must show all of the following three things:

1. your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. you have no rights or legitimate interests in respect of the domain name; and
3. your domain name has been registered and is being used in bad faith.

There are a number of ways a trade-mark owner can show trade-marks rights for the purpose of the first factor. Both registered and common law trade-marks are acceptable. Celebrity names and geographic names, like the names of cities, have also been accepted. In terms of the latter two factors, the UDRP provides non-exhaustive lists of factors which show bad faith and a lack of legitimate interests. The most common type of bad faith is that the registrant of the domain name offers to sell the domain name to the trade-mark owner for a large sum of money. If the registrant does not have a legitimate right to have the domain name, then such an offer will usually result in a finding of bad faith. Providing false information to the domain name registry can also lead to a finding of bad faith.

• Berkman Centre for Internet & Society, Harvard Law School "UDRP Opinion Guide"
• UDRPinfo: Michael Geist's UDRP information page, including statistical information about UDRP decisions and panelists

The only remedies available under a UDRP proceeding are the cancellation of a domain name registration, or the transfer of the domain name to the trade-mark owner. Cancellation is rarely requested by trade-mark owners and panels have ordered transfers even when cancellation has been requested. Where a complaint is rejected, panels may also make an order regarding of reverse domain name hijacking described below.

The CDRP is a dispute resolution policy incorporated into every '.ca' domain name registration agreement. Like the UDRP for generic top level domains, the CDRP sets out the framework for the resolution of disputes between ".ca' domain name registrants and trade-mark owners alleging bad faith registration of domain names.

CDRP disputes are resolved in accordance with the CDRP and the CDRP rules. All proceedings are administered by dispute resolution service providers approved by CIRA (currently either the British Columbia International Commercial Arbitration Centre or Resolution Canada Inc).

The complainant files a written complaint in either French or English. You then have 20 days in which to respond. If you do not respond, the panel will make a decision based on the complainant's information. If you want to dispute the complaint, you should research the dispute resolution provider's panelists and select the ones you prefer. The dispute resolution provider will assign a three-person panel automatically if you file a response to the complaint.

The panel will issue its decision based on the written submissions and evidence provided by the parties and should normally make its decision within 28 days of being appointed.

• Canadian Internet Registration Authority (CIRA): background information regarding the CDRP, including the text of the text of the CDRP itself
• CDRP Rules

The CDRP is very similar to the UDRP, but different in important respects. To succeed under the CDRP, a trade-mark owner must meet CIRA's Canadian Presence Requirements, for example, by showing that they have a registered Canadian trade-mark or that they were incorporated in Canada. In addition, the complainant must also show all of the following:

1. the domain name is Confusingly Similar to a Mark in which the Complainant had Rights prior to the date of registration of the domain name and continues to have such Rights;
2. the Registrant has no legitimate interest in the domain name; and
3. the Registrant has registered the domain name in bad faith.

The CDRP contains exhaustive lists of facts that must be shown to prove bad faith and legitimate interests. The complainant must show that one of the bad faith factors is met in paragraph 3.7 of the CDRP, which includes offers to sell the domain name for a large sum of money. The complainant must also show some evidence of your lack of legitimate interest in the domain name. It is then up to you to show that you do have a legitimate interest in one of the ways listed in paragraph 3.6 of the CDRP. For example, you might claim that you used the domain name in good faith in association with a non-commercial activity including, without limitation, criticism, review or news reporting.

• CIRA CDRP Dispute resolution decisions
• David Wotherspoon, "What's New at The Canadian Internet Registration Authority", (2003) 20 C.I.P.R. 293.

As with the UDRP, the only remedies available under the CDRP are the cancellation of a domain name registration, or the transfer of the domain name to the trade-mark owner. Where a complaint is rejected, panels may also make an order regarding of reverse domain name hijacking described below.

Reverse domain name hijacking is also known as a 'bad faith complaint'. This occurs where the trade-mark owner brings a baseless or frivolous complaint against you under the UDRP or CDRP in an attempt to 'hijack' your domain name from you. Under the UDRP, the panel can make a declaration that a complaint was brought in bad faith but it cannot punish the complainant in any way. Under the CDRP, the panel can order the trade-mark owner to pay up to $5000 to you if the trade-mark owner brought a complaint against you in bad faith.