MICHAEL GEIST
Thursday, October 5, 2000
Following a public consultation and months of discussion, in which I took part, Canada's dot-ca administration agency has now released its draft rules for a Canadian dispute resolution process.
The draft will go a long way in determining the rights of domain name owners in Canada and will constitute one of the most important Canadian Internet policy documents in recent memory.
The Canadian Internet Registration Authority (CIRA) has published the draft on its Web site (http://www.cira.ca )and is accepting public comment until Oct. 29. Since the draft features several issues that are up for discussion, Canadians should take the time to consider it and provide CIRA with their views.
The draft is an attempt to create a Canadian version of the ICANN Uniform Dispute Resolution Process (UDRP), the much-discussed international domain name dispute resolution process that has been in effect since the start of this year.
In certain respects, the ICANN process has been a remarkable success.
It has provided a quick and relatively inexpensive resolution to hundreds of domain name disputes and has effectively bridged the jurisdictional concerns that arise when a domain name registrant is located in one country and the complainant (typically a trademark holder) is located in another.
Unfortunately, the ICANN process has also been the subject of significant criticism since evidence of inconsistent decisions, forum shopping between arbitration providers and perceptions of bias have led critics to question the fairness of the process.
For the Canadian system to be deemed a success, we must learn from the ICANN experience by adopting rules that capitalize on the benefits and address the issues that warrant the criticism. The current draft has the potential to achieve this standard, but only if some important changes are made.
The overall structure of the draft smartly borrows its format from the ICANN version, stating that it is designed to provide a forum for clear cases of cybersquatting. The draft rules give complainants the right to initiate actions where they allege that: the disputed domain is confusing with a trademark or certain other marks for which they have rights; the domain name registrant has no rights in Canada; and the registrant registered the domain in bad faith.
Unlike the ICANN system, which provides only limited guidance on what constitutes confusion, rights in a domain name and bad faith, the Canadian process is much more comprehensive. It provides exhaustive definitions for each aspect of the test including details on what constitutes a mark, rights, confusion, and bad faith. In fact, the bad faith definition includes eight factors that suggest bad faith as well as an additional 10 factors that mitigate against a finding of bad faith.
If an arbitrator finds that all three parts of the test are met, it is entitled to transfer, cancel, or suspend the domain. Like the ICANN process, the Canadian process gives both the complainant and the registrant the right to appeal to the court system.
Although there are many issues that merit examination and comment, there are six that are particularly important and controversial.
Unlike the ICANN process, which requires both bad faith registration and bad faith use of the domain, the current draft is limited only to bad faith registration. By limiting the Canadian process to only bad faith registrations, the standard has been lowered significantly for complainants. Moreover, the bad faith analysis is rendered somewhat confusing since many of the factors that are related to bad faith focus on the use of the domain.
The sheer number of bad faith factors -- five times as many as the number found in the ICANN process -- must be closely examined. The current draft does an excellent job of outlining the many potential factors to be considered, yet the large number of criteria may itself become a source of confusion as arbitrators will likely find elements both for and against bad faith.
Following from the large number of bad faith factors, the evidentiary standard that should be applied by arbitrators in reaching a bad faith finding is of critical importance. The draft says that the Canadian process is designed to provide a forum for clear cases of bad faith registration. This suggests that transfer, cancellation, of suspension of a domain should only occur where the balance of bad faith analysis weighs heavily toward bad faith. Unfortunately, there is no such guidance in the current draft. Arbitrators are simply asked to consider criteria for and against bad faith and are never told what the threshold is for deciding to transfer, suspend or cancel the domain.
Canadians must determine whether the process should be limited to complainants who meet the newly established Canadian Presence Requirements. The current requirements are sufficiently broad to take into account both Canadian residents and those with intellectual property rights in Canada in the form of trademark registrations.
As it stands, a complainant who wins a case but is not entitled to hold a domain in Canada could nominate someone else to hold the domain on their behalf.
It is open to question whether complainants whose ties to Canada are so limited that they do not meet the liberal requirements should still benefit from the process and potentially win the transfer of a domain name that they themselves have no right to own.
Commentary is being solicited on the consequences of a complaint made in bad faith. The current rules employ a reverse hijacking clause to discourage frivolous actions by punishing complainants for actions brought without merit. Without a reverse hijacking provision, however, complainants are effectively encouraged to commence actions since the process features low costs and has no downside to losing the complaint.
The absence of procedural rules that will govern the Canadian process must also be factored into the analysis. Although such rules are forthcoming, their absence is problematic since the ICANN experience has demonstrated that procedural rules have a profound impact on the effectiveness and fairness of the entire process. Without them, issues such as the choice of dispute resolution provider are left open to question.
The release of the draft rules presents Canadians with an important opportunity to play a role in crafting Internet policy. No Canadian with an interest in these issues should pass it up.
Michael Geist is a law professor at the University of Ottawa Law School, director of e-commerce law at the law firm Goodman, Phillips & Vineberg and the author of Internet Law in Canada (Captus). He can be reached at mgeist@uottawa.ca and on the Web at www.lawbytes.com.
