MICHAEL GEIST
Thursday, May 17, 2001
The rules surrounding domain names have always been somewhat difficult to pin down. The allocation of dot-ca domains underwent dramatic change last year, while the dispute resolution process for dot-com domains was subject to frequent revision until the establishment of the current international arbitration system in late 1999.
In light of past modifications, courts could be forgiven for exhibiting some uncertainty in dealing with domain names during the early years.
For example, in Canada's first reported domain-name case -- a 1995 PEI decision involving the domain pei.net -- the court flatly admitted that it was unfamiliar with the Internet and emphasized irrelevant facts such as the registration of the disputed domain name in upper-case letters in reaching its decision.
Two recent Ontario cases suggest that many still haven't figured things out.
In the first of what is likely to become a torrent of Canadian cases involving dot-ca domains, itravel2000.com Inc., a Mississauga-based on-line travel agency, challenged the registration of itravel.ca.
The travel agency asked the court to issue an injunction prohibiting the current itravel.ca registrant from selling or transferring the domain. The court granted the injunction, finding that the company had legal rights in the itravel name and that it met the irreparable harm threshold needed for an injunction.
Unfortunately, it based its decision on a mistaken understanding of the dot-ca system. Fearing the potential transfer of the itravel.ca domain to a foreign party, the "irreparable harm" in question was the transfer of the domain out of the country and beyond the reach of the Canadian legal system.
Closer examination of the current rules of dot-ca ownership, however, reveal that these fears were unfounded. Dot-ca domains may only be transferred to parties that meet Canadian presence requirements, and therefore cannot be transferred out of Canada. Moreover, the dot-ca registration agreement explicitly provides for Canadian law to apply to dot-ca disputes.
A second recent Ontario case involving competing claims over the expressvu.org domain yielded the right result but contains some questionable reasoning. That case dealt with a longstanding dispute between Bell ExpressVu, the satellite-TV service owned by BCE Inc., and Ted Edmonds, a retailer of grey-market direct-to-home satellite services.
Soon after ExpressVu launched a lawsuit against Edmonds, the retailer registered the expressvu.org domain, establishing a site to promote public awareness of the lawsuit. ExpressVu argued that the site infringed on its ExpressVu trademark and asked the court to order the domain transferred.
The court rejected ExpressVu's request on four grounds. First, it ruled that there was not the commercial use of the ExpressVu trademark needed for an infringement claim. Second, it felt that the site was best characterized as an exercise in free speech, and is therefore protected by the Canadian Charter of Rights. Third, the court noted that the site contained a disclaimer clearly indicating that it was not associated with ExpressVu, and was therefore unlikely to cause confusion.
For its fourth point, the court ventured into the domain-name world, calling attention to the use of a dot-org domain, rather than a dot-com. The court seemed to suggest that the primary concern in the leading cybersquatting cases is that the public will search for the dot-com domain and not find the expected site. Since BCE already owns the ExpressVu.com domain, the court reasoned that it should not be concerned with another party owning the dot-org version.
Once again, this analysis of the domain-name system is faulty. It has become standard practice among trademark holders to register all versions of their marks, including dot-com, dot-org, dot-net, and increasingly dot-ca. While dot-com is the most popular of those domains, there is no shortage of cybersquatting cases involving the other domain suffixes.
Changes in the dot-ca registration rules and the growing use of sites for free-speech purposes suggest that domain-name cases will become increasingly common in Canadian courts in the months ahead. Perhaps this escalation will reduce the confusion and increase the comfort and understanding with the domain-name system and the rules that govern it.
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.
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