MICHAEL GEIST
Thursday, September 27, 2001
Nearly a year after it took its first stab at developing a Canadian domain name dispute resolution policy, the Canadian Internet Registration Authority is once again inviting comment on its significantly revised, near-final version.
The latest incarnation of the Canadian dispute resolution policy (CDRP) is accompanied for the first time by the procedural rules that will govern the dispute resolution process.
If approved, the combined documents will provide Canadians with a domain name dispute resolution process that maintains many of the benefits of the Internet Corp. for Assigned Names and Numbers' uniform dispute resolution policy (ICANN UDRP), while at the same time addressing concerns about the ICANN UDRP's fairness.
(In the interests of full disclosure, it should be noted that I currently sit on the CIRA board of directors and assisted in the development of the current policy. The opinions expressed herein are personal and do not necessarily reflect the views of the board.)
The overall structure of the CDRP wisely borrows its format from the ICANN UDRP, since that process is familiar to many within the legal and Internet communities. The process calls for a quick adjudication of all disputes in a cost-effective manner, and ensures that either party may still launch a court action if they are not satisfied.
The CDRP gives complainants the right to initiate actions where they allege that:
The disputed domain could be confused with a mark in which they have rights.
The registrant registered the domain in bad faith.
The domain name registrant has no legitimate interests in the domain.
To prove confusion, complainants must demonstrate that the domain resembles their mark (which includes registered trademarks and trade names) in appearance, sound or concept, so that someone would likely confuse the domain with the mark. To prove bad faith, complainants must provide evidence of one of three types of bad faith: registering the domain primarily for the purpose of selling or transferring it to the complainant or to a competitor of the complainant; registering the domain to prevent the complainant from doing so where the registrant has engaged in a pattern of such conduct; or registering the domain primarily for the purpose of disrupting the business of the complainant, where the complainant and the registrant are competitors.
Once complainants have proved confusion and bad faith, it falls to registrants to prove that they have a legitimate interest in the domain. The exhaustive list of what constitutes legitimate interest includes good faith commercial usage of the domain; good faith non-commercial use of the domain for such activities as criticism or news reporting; and good faith use of a generic domain or a domain that refers to a geographical place.
It is noteworthy that if registrants demonstrate a legitimate interest, they are entitled to retain it even if the complainant has proved confusion and bad faith.
There are several benefits to the Canadian approach. First, standards are more clearly defined and inclusive, thereby leaving less room for interpretation by arbitrators. This should ensure that the Canadian decisions do not suffer from the inconsistency that has plagued the ICANN UDRP.
Second, the rules are more balanced than ICANN's. While respondents do not need to prove anything under the ICANN UDRP, the CDRP places the onus on respondents to prove legitimate interest, yet still ensures that respondents win if they succeed in proving their case.
Third, the rules explicitly protect free speech by providing that good faith criticism of the sort that exists on the hundreds of "Company X sucks" sites, constitutes a legitimate interest.
The decision making process is also more equitable. Following a recommendation from a recent study I conducted on the ICANN UDRP, the rules provide that all contested cases will be decided by three-member panels, and that the process be paid for by complainants. Where respondents fail to respond, complainants have the option of requesting a less costly, one-person panel.
The Canadian rules also contain a reverse hijacking clause with some teeth. The clause, which can be invoked when complainants commence an action in bad faith, provides that complainants can be ordered to pay up to $5,000 to respondents to defray the costs of defending an action that should never have been brought in the first place.
The CDRP includes several provisions specific to Canada. For example, complainants must meet Canadian Presence Requirements in order to bring an action, and Canadian law is deemed to govern all disputes. Moreover, complaints may be brought or defended in both English and French.
The CDRP provides dot-ca domains with a system for adjudicating clear-cut cybersquatting cases in a way that respects the interests of both trademark holders and domain name registrants. While there's still much to be done, including naming the dispute resolution providers and completing the current public consultation (Oct. 12), it now seems likely that Canada will have its own dispute resolution policy before the year is out.
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. His Web site is http://www.lawbytes.com.
mgeist@uottawa.ca
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