Preparing a successful
domain name complaint is a
challenging task.
The dispute resolution procedures adopted by the Internet Corporation for Assigned Names and
Numbers (ICANN) and the Canadian Internet Registration
Authority (CIRA) provide a summary arbitration procedure that
trademark owners can use to
recover domain names from cyber-squatters. But the nature of the
process means that the complaint
must be a combination of pleading, evidence and legal argument.
The ICANN Uniform Dispute
Resolution Process (UDRP) and
the CIRA Dispute Resolution Process (CDRP) have different rules
MICHAEL
ERDLE
and criteria for proving a complaint, but the basic ideas are the
same. Both require the complainant to prove four things:
The complainant has rights in a
trademark or trade name;
The disputed domain name is
identical or confusingly similar;
The domain name was registered and used in bad faith;
The registrant has no legitimate
interest in the name.
Let’s look at them in order.
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Rights
The complainant should
include in the complaint a copy
of a trademark registration,
pending application or other official corporate or business name
registration that it is relying on.
Under the CDRP, these must be
Canadian rights. Foreign registrations don’t count. Under the
UDRP, a registration anywhere
in the world is sufficient.
Confusingly similar name
If the domain name is identical, proof is simple.
Often there are slight variations between the domain name
and the complainant’s name or
trademark. Spaces and punctuation are omitted from domain
names for technical reasons.
Spelling may be different,
although the two sound alike.
The domain name may include
the complainant’s mark with
other elements. The complainant
must show why the domain name
would be confusing to the average Internet user.
Bad faith
In some cases, bad faith is
clear-cut. If the registrant has
listed the domain for sale or contacts the trademark owner directly, these offers can be used as
evidence of bad faith. Use of the
domain to direct traffic to a competing site or to generate revenue
from advertising competing
products and services will also be
strong evidence of bad faith.
The complainant faces a more
difficult challenge if the domain
name is parked, with no content
on the site. In those cases, has the
domain been “used” at all? The
complainant must show at least
some evidence of bad faith in the
registrant’s conduct.
No legitimate interest
This is often the most difficult
element for the complainant to
prove. How does one prove a
negative? Under the current
CIRA privacy rules, registrants
are allowed to hide their identity.
So it may be difficult for the complainant to find out who the
registrant is and whether they
have any interest in the name.
The registrant has a legitimate
interest if the name corresponds
to the registrant’s legal name,
trademark or business name.
Non-commercial or fair use of
the name—for commentary or
criticism — without any motive of
commercial gain is also deemed
to be a legitimate interest.
There is a link between legitimate interest and bad faith in
most domain name disputes. Evidence of one will tend to counteract evidence of the other. The
complainant must attempt to
obtain as much evidence of bad
faith as possible, to show that the
registrant doesn’t really have any
legitimate interest in the name.
The complainant should
include all evidence of bad faith
in the complaint. This includes
screen shots of the registrant’s
site showing commercial use of
the name, ads for competing
products and services, links to
competing sites and the like.
The complaint should also
refer to the grounds of legitimate
interest and provide evidence
and arguments why they do not
apply. The complainant must
anticipate arguments that the
registrant might make in support
of a claim that it does have a
legitimate interest.
Michael Erdle is a partner at
Deeth Williams Wall LLP in
Toronto. He has more than 20
years of experience in information technology law and has
advised many clients on domain
name complaints.
Chamber of Commerce supports new spam bill
Spam
Continued From Page 9
mously by the House of Commons, but died when Parliament was prorogued in 2009.
That bill had undergone significant amendments in
2009 in response to various
concerns raised by stakeholders. Further amendments
were made for the new bill,
according to Meahan.
The Canadian Chamber
of Commerce raised
particular concern over proposed related
amendments
to PIPEDA.
Specifically,
the Chamber objected to a
provision of the anti-spam
bill that would have made
inapplicable certain exceptions to the collection of
information provided for in
PIPEDA. It objected to what
it considered to be such a
broad provision that could, it
argued, prohibit the collection of publicly available personal information over the
Internet without consent.
The Chamber asserted
that FISA could have thus
made it illegal for businesses
to collect, for example, personal information over the
Internet to investigate bank
and insurance fraud and
identity theft.
As a result, the new bill
has been amended to clarify
the ambiguity, by making the
provision more specifically
apply in instances where
access to computer systems
is done in contravention of
an Act of Parliament, according to Meahan. “Our concerns were fully addressed,”
according to Chris Gray, director of the Canadian Intellectual Property Council and
Innovation Policy for the
Chamber, who added that
the national business organization is supportive of the
new legislation.
The new bill is currently
awaiting second reading in
the House of Commons.
