Although most domain name disputes are primarily a matter of trademark law, recent experience suggests that cases are increasingly moving beyond issues of trademarks toward fundamental questions of freedom of speech.
Given the conventional wisdom that the United States provides the world's strongest free speech protections, it is both surprising and noteworthy that Canada has emerged as a leading protector of free speech interests in relation to domain names, while the United States has gradually ceded power to trademark interests at the expense of free speech.
The different approaches are highlighted by comparing how the dispute resolution processes for dot-com and dot-ca domains names handle protest domains such as errorplan.com — a new Web site criticizing Air Canada's Aeroplan program — and the multitude of "sucks" sites, such as vivendiuniversalsucks.com and Wallmartcanadasucks.com.
The Internet Corp. for Assigned Names and Numbers' uniform domain name dispute resolution process (ICANN UDRP) has addressed at least a dozen protest domains over the past two years with maddeningly inconsistent results.
In a few instances, panelists have taken care not to transfer a domain simply because it is irritating to an established trademark holder.
In a decision involving Wallmartcanadasucks.com, for example, a UDRP panelist ruled that Ken Harvey, a Canadian, was entitled to retain the domain since the "sucks" domain was not confusing with the target trademark, and the domain wasn't considered to have been registered in bad faith.
A significant number of cases have reached the opposite conclusion, however, employing tortured reasoning to squeeze "sucks" domains into the confines of the UDRP.
In one recent bizarre case, a panelist ordered the transfer of vivendiuniversalsucks.com to Vivendi Universal, concluding that some Web users might confuse the "sucks" site with the corporate site.
How might consumers mix up the two sites? According to this decision, appending "sucks" to the domain did not remove the potential confusion, since some entities might actually want to include the word sucks in their domain name. As support for this conclusion, the panelist argued that a vacuum cleaner maker such as Electrolux might want electroluxsucks.com, or that a rock band might employ the word suck in the title of a song and proceed to register a "sucks" domain.
Moreover, free speech concerns involving the UDRP are not limited to protest sites. In a decision released late last monthJan, a panelist considered the applicability of the UDRP to several domains that bore the names of German government ministries. The sites in question contained Nazi content that is illegal in Germany but legal in the United States. Although the sites were U.S.-based, the panel transferred the domains to the German government, illustrating how domain name dispute resolution can actually trump free speech rights.
In marked contrast to the UDRP, the newly established Canadian domain name dispute resolution policy expressly protects good faith, non-commercial uses of domain names, providing that criticism, review, or news reporting is interpreted as a legitimate interest in the domain.
The inclusion of this provision is critical, since a domain name owner can win a dispute by proving they have a legitimate interest in the domain, even if the domain is confusingly similar to a trademark or if there is some evidence of bad faith at the time of registration.
The difference between the two approaches is made plain when considering the status of errorplan.com.
When the site began generating publicity several weeks ago, Air Canada quickly launched an investigation, and indicated that it planned to pursue all available legal remedies against the site and its owners.
While a UDRP action against the domain name would be a close call, there is little question the domain would be protected had the owners used errorplan.ca instead.
Until recently, trademark law rarely entered into the realm of free speech issues. That is clearly no longer the case as trademark and speech considerations come into conflict with increasing frequency.
On this issue, it is good to see that it is Canada that is consistently siding with speech.