MICHAEL GEIST
Thursday, February 1, 2001
Few areas of Internet law have generated as much attention in recent years as disputes over domain names. Since the mid-1990s, trademark holders and domain name registrants have regularly battled over who is most entitled to own a particular domain.
Faced with this new kind of dispute, courts quickly gravitated toward trademark law, where they found a natural tie between a trademark and a domain name.
That tie was always tenuous at best, however. Unlike trademark law, which permits the registration of similar marks provided that there is no confusion, domain names are unique. There can be multiple users of the term United -- United Airlines, United Van Lines, or the United Way, to name three -- but there can only be one United.com.
Moreover, there are typically no registration requirements for dot-com domain names -- it is simply a first-come, first-served system.
Registered trademarks, on the other hand, must meet several requirements, including one that ensures the uniqueness of the trademarked term. For example, a person cannot trademark the generic term "cars." But someone can register the domain name Cars.com.
When courts started to struggle when shoehorning domain name disputes into existing trademark law, the U.S. Congress responded with a series of measures designed to expand the rights of trademark holders in an effort to make it easier to deal with domain name disputes.
Canada has yet to follow suit, and the differences between the two systems are becoming increasingly evident.
Under traditional trademark law in both Canada and the United States, trademark holders alleging infringement are required to prove that the alleged infringer used their trademark in commerce and in competition with their business. Since a mere domain name registration may not meet that burden of proof, the United States enacted the Trademark Dilution Act, which simply requires evidence that the infringer used the famous mark for commercial purposes, without the necessity to prove competition between the parties.
If that wasn't enough, the U.S. Congress then enacted the Anticybersquatting Consumer Protection Act, which provides trademark holders with a further expansion of rights. With this, a trademark holder does not even need to prove use or confusion -- bad faith registration and an attempt to profit from the domain is sufficient.
Unlike the United States, the Canadian legal framework has not been amended to specifically address domain name issues.
A recent Federal Court of Canada case involving the SprintCanada.com domain illustrates the tenuous link between trademarks and domain names under Canadian law.
The case concerned a decade-old feud between Sprint Communications and Montreal-based Merlin International Communications.
Sprint Communications registered its Sprint trademark in 1985 and has used it ever since. Merlin registered Sprint Canada as a trade name in Montreal in 1988 (trade names carry only limited legal status and cannot be used to infringe on a registered trademark).
Merlin admitted that its use of Sprint Canada trade name would sometimes confuse customers who would inquire whether it was related to the phone company. Anxious to end any possible confusion, Sprint Communications launched a trademark infringement lawsuit in which it requested that the court order Merlin to cease using the Sprint Canada name.
After the lawsuit was under way, Merlin registered both SprintCanada.com and SprintUS.com, though the domains were only used for e-mail purposes and never served as addresses for a Web site.
In reviewing the case, the court concluded that Merlin's use of the Sprint trademark constituted trademark infringement and it therefore granted an injunction ordering Merlin to stop using the name.
In addressing the domain names, however, the court refused to order Merlin to cease using any domain that might be confusing with the Sprint trademark.
The court ruled that since the domains were never used for Web sites, there was not any confusion and therefore no trademark infringement. Accordingly, the domain names remain in Merlin's possession.
As cases such as SprintCanada.com become more frequent, Canadian policy makers will face increasing pressure to reform Canadian trademark law to address domain name concerns that cannot be adequately dealt with by the current legislation.
The emergence of an international domain name dispute resolution process has provided an effective alternative for many disputes. But the calls to follow the lead of the United States in the application of trademark law to domain name disputes in Canada is likely to intensify in the months ahead.
Michael Geist is a law professor at the University of Ottawa Law School and director of e-commerce law at the law firm Goodmans LLP.
mgeist@uottawa.ca
