As the Internet blossomed into a global phenomenon in the mid-1990s, domain name disputes became one of the first legal issues to emerge. Designed as an easy and effective method to locate Web sites and route e-mail, speculators quickly realized the value in registering domain names — particularly those matching trademarks — and reselling them to the highest bidder.
This practice of "cybersquatting" provided the impetus for several unsuccessful attempts at a dispute resolution system. Finally, the Internet Corporation for Assigned Names and Numbers (ICANN), the agency responsible for administering the domain name system, approved the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999.
The policy has since resolved thousands of domain-name disputes and at the same time attracted considerable controversy. While supporters point to the fact that the system is fast, global and relatively inexpensive, detractors note that the system has been plagued by allegations of bias and inconsistent decision-making. In the rush to stop cybersquatting, critics fear that the policy harms free speech interests; many criticism-oriented Web sites have been shut down under the guise of domain-name dispute claims. Most troubling have been studies that point to regular "forum shopping," where complainants select the arbitration provider most likely to rule in their favour.
When the Canadian Internet Registration Authority, which administers the dot-ca domain, sought to create its own dispute resolution policy, it took note of the dispute resolution policy's good and bad features and crafted a policy designed to resolve clear cases of cybersquatting, protect free speech, and avoid forum shopping. (In the interests of full disclosure, it should be noted that I currently sit on the registration authority's 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 policy, known as the Canadian Domain Name Dispute Resolution Policy, was launched last year. Although the sample size is admittedly relatively small and therefore not statistically significant (some might argue that the sample size is likely to remain small as the Canadian policy will always attract dozens, rather than thousands, of cases), there is some cause for concern as an analysis of the 13 decided cases reveals divisions in both interpretation of the rules and in outcome between arbitration providers.
On a substantive level, the most contentious issue appears to involve questions around the meaning of "confusingly similar." The Canadian policy requires the complainant, invariably the trademark holder, to prove that the contested domain name is confusingly similar to the name in which they have rights, known as the mark. While some panelists believe that the domain name and the mark must be virtually identical, others are satisfied with mere resemblance.
These different interpretations have yielded a series of decisions that are difficult to reconcile. For example, in cases involving airproducts.ca, cheaptickets.ca, and acrobat.ca, the panelists all found that the complainants did not show confusing similarity since their marks, such as Air Products Canada Ltd., were variations on the domain. Conversely, the Government of Canada successfully argued that a range of domain names, including weatheroffice.ca and ecgc.ca, were likely to cause confusion even though they merely resembled marks in which the government had rights.
Panelists have also disagreed on the importance that is attached to multiple domain name registrations. That issue may be relevant when the complainant tries to prove bad faith on the part of the domain name registrant. In several cases, panelists have expressed no concern with hundreds of registrations, while in another case, only three registrations was seen as sufficient to demonstrate a pattern of bad faith.
These differences in substantive interpretation constitute a setback for the dispute resolution policy, since it was hoped that the tightly drafted document would yield consistent decisions that address only the most obvious cases of cybersquatting and eliminated differences in policy interpretation.
Even more troubling is an unmistakable trend in outcome results between arbitration providers, a development that is likely to lead to forum shopping. When Canadian registration authority launched the dispute-resolution policy, it accredited two Canadian dispute resolution providers — the British Columbia International Commercial Arbitration Centre and Resolution Canada. Since complainants launch the action, they are entitled to select their provider.
With 13 cases now decided, the B.C. centre has decided eight of them, resulting in a domain name transfer in all but one decision. Resolution Canada, meanwhile, has handled five cases, transferring the domain name on only two occasions. While this is a very small sample, it has not escaped notice of the legal community who may well advise clients to select the provider with the more favourable track record.
Although these early developments raise concerns, the good news is that the dispute resolution policy is still its infancy and there is opportunity to tweak it. Much like the current ICANN review of its resolution policy, the Canadian registration authority should also consider an early review and contemplate amendments to ensure that the policy meets its goals of fairness for both domain name registrants and trademark holders.