Introduction: What is a Domain Name Dispute?
by Gil Zvulony, Toronto Internet Lawyer
A domain name dispute is just what it sounds like: a dispute over the rightful use of an internet domain name.
Someone might register a domain name that is similar to the name or trade-mark of an existing business. Sometimes this is done to fool people into thinking that the registrant is associated with that business. Other time it may be an example of cybersquatting, buying up a domain name for the purpose of selling it back to the person who has a legitimate business interest in the name.
If someone has registered a domain name for some illegitimate purpose against your business, you have certain rights and remedies available to you.
Option 1: Alternative Dispute Resolution
There are different proceedings for resolving a dispute over an American domain name (usually ending in .com) and a Canadian domain name (ending in .ca).
For an American domain name, dispute resolution is governed by the Uniform Domain-Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN). The Canadian Internet Registration Authority (CIRA) has its own Domain Name Dispute Resolution Policy (“the CDRP”) for Canadian domain names. Both types of dispute resolution are carried out in writing, not in person, and adjudicated by one or three arbitrators.
Both proceedings examine the same basic questions when deciding whether to transfer a domain name away from the current registrant. If you are the complainant, you must show the following three things:
1. The registrant’s domain name is identical or confusingly similar to a trade-mark of the complainant’s;
2. The registrant registered the domain name in bad faith (that is, he or she registered it for the purpose of competing with the complainant or selling the name back to the complainant);
3. The registrant has no “legitimate interest” in the domain name: Evidence of lack of legitimate interest in the name can be that the registrant did not use the domain name for a site, or that if he or she did use it, it has no connection to his or her business.
Under the CDRP, a complainant must satisfy the Canadian Presence Requirements by showing that you have a legitimate claim to a .ca domain, usually either by being resident in Canada or by having a business registered in Canada.
If the complainant proves the required elements, the arbitrators will order the registrant to give up registration of the domain name. They may also order the transfer of registration of the domain name to the complainant if that is the remedy asked for in the complaint.
An arbitrator’s decision can be appealed to a court, by either side.
It should also be noted that these arbitrations are only concerned with the name of the sites, not the content of the sites. While the content is not completely irrelevant – there must be some kind of similarity in content in order for there to be a possibility of confusing one site with another – the party that loses a domain name dispute only has to give up the name, not change its website content.
Option 2: Court Proceedings
A domain name dispute can also be settled by starting an action in court. What court hears the action depends on whether a trade-mark has been infringed and whether the trade-mark is a registered trade-mark.
If you are suing for infringement of a registered trade-mark, the Federal Court of Canada has jurisdiction, since such actions are covered by the Trade-Marks Act. In such an action, you will need to prove that the registered domain name is confusingly similar to your unique trade-mark.
If you do not have a registered trade-mark, you must sue the offending registrant for the common-law tort of passing-off. The allegation in a passing-off case is that the registrant is providing unfair competition by making it seem like his or her business is associated with yours. You would be required to prove that the registrant has caused actual or potential harm to your business by infringing your trade-mark and misleading the public.
This type of action is based on common law rather than a federal statute, and therefore must be heard by a provincial court.
The United States also has a piece of legislation called the Anti-Cybersquatting Consumer Protection Act (ACPA), allowing trade-mark owners to sue domain registrants specifically for cybersquatting. While Canadian trade-mark owners cannot take advantage of this, a Canadian registrant can be sued under this act.
Either of the two basic methods of resolving a domain name dispute has its own set of advantages and disadvantages.
The advantage of choosing arbitration is that it is quick and relatively inexpensive. Also, because the disputants are not required to argue the case in person, it saves time as well as money. The disadvantage is that the only thing the arbitrator can award you is the domain name: the process cannot be used to obtain compensation for lost business or other damages suffered.
The advantage of going to court is that you can win damages. The disadvantage is that going to court is significantly more expensive than the alternative dispute resolution. The court process is also a longer and slower process.
If you simply want the other person or business to stop using a domain name similar to yours, then the arbitration process is likely the simplest, fastest way to handle that. On the other hand, if you have lost a lot of business to the infringing site, or if the infringement is hurting your reputation, then simply getting the domain name will not compensate you for the damages you have suffered. In such a case, going to court might be the best way to get compensation for such losses.
Sometimes you can use both remedies: arbitration to settle registration of the name, and a court action to settle issues such as damages. Clause 4(k) of the UDRP allows a complainant to use both an ICANN proceeding and a court action, as long as the court action is started before the ICANN proceeding is commenced or after the ICANN proceeding is concluded. The CDRP does not contain any such provision, but it does not prohibit launching court proceedings as well as a CIRA hearing.
Which method or methods you use of resolving a domain name dispute, and who adjudicates the dispute, depends on the circumstances. What is certain is that you do not have to give up on a domain name just because someone else registered it before you did. If the domain name has a connection to you or your business, and none at all to the person who registered it, you may have a better legal claim to it than the registrant – and the law provides ways to prove it.