Domain Names and E-CommerceThis is the html version of the file http://www.bereskinparr.com/publications/pdf/TM-Domain-Rowden-Lee.pdf. G o o g l e automatically generates html versions of documents as we crawl the web. To link to or bookmark this page, use the following url: http://www.google.com/search?q=cache:k1KOzCDvHQMJ:www.bereskinparr.com/publications/pdf/TM-Domain-Rowden-Lee.pdf+cira+government+cyberpiracy&hl=en&ie=UTF-8 Google is not affiliated with the authors of this page nor responsible for its content. These search terms have been highlighted: cira government cyberpiracy Page 1 Domain Names and E-CommerceCynthia Rowden & Jeanette Lee of Bereskin & Parr2002© 2002 Cynthia Rowden & Jeanette LeeBereskin & Parr40 King Street West, 40thFloor,Toronto, Ontario, Canada M5H 3Y2Phone: 416-364-7311Fax: 416-361-1398www.bereskinparr.com Page 2 - 2 -CHAPTER: DOMAIN NAMES & E-COMMERCE1.0Introduction2.0Domain Name Registration2.1“First Come, First Served”2.2Registrars & Registries2.3“Unrestricted” Registration Versus “Restricted” Registration2.4Choosing gTLDs and ccTLDS3.0Trade Mark Disputes3.1Canadian Causes of Action under Trade Mark Law3.2U.S. & U.K. Cases on Cyberpirates4.0Uniform Domain Name Dispute Resolution Policy ("URDP")5.0U.S. Anticybersquatting Legislation6.0Jurisdiction and Domain Name Disputes7.0CIRA's Dispute Resolution Policy for the .ca Domain Page 3 - 3 -1.0IntroductionA domain name is theletter-based user-friendly address linking computers ornetworks to the Internet. A domain name reads from right to left, in terms ofincreasing specificity. The "top level domain" (“TLD”) is intended to correspond witheither the category of entity that registered the domain name (or the purpose forwhich it will be used), or the geographical region of the organization.As will be described further in the section below, there are a number of systemsavailable for the registration of domain names, including the generic top leveldomains (gTLDs), established and administered by the Internet Corporation ofAssigned Names and Numbers ("ICANN"), .com (originally intended for businessand commerce), .net (originally intended for networking providers) and .org (formiscellaneous and non-profit organizations), and the newly launched .info(suggesting "information"), all of which are effectively "open" for anyone to register.Also administered by ICANN are certain restricted gTLDs, which are only availableto specific entities, such as .gov (U.S. government sites), .mil (U.S. militaryorganizations), .int (international treaty organizations and internet databases), .edu(U.S. educational institutions), and the newly approved .biz (businesses), .name(individuals by name), .pro (professionals such as accountants, lawyers, physicians),.coop (non-profit cooperatives), .museum (museums), .aero (air-transport industry),11Consult the Internet Assigned Numbers Authority (“IANA”) website at for current listings. Page 4 - 4 -There are also country code top level domains (ccTLDs), such as .ca, for Canada,.us for the United States, .de for Germany, .jp for Japan, which are established byICANN and administered by the national governments, public authorities orcorporations delegated by ICANN to operate each respective country code domainsystem, and establish its rules and policies.2Domain names facilitate e-commerce by providing customers with an easy-to-remember, alphanumeric website address, and may also be used in businessnames or as trade marks to suggest online services. Historically, of the choicesavailable in gTLDs, .com names have been considered more valuable and desirablethan others (especially in North America) because of the immediate connection inthe minds of the public between the term .com and Internet commercial activity.The domain name system, particularly for the open gTLDs, has operated with fewrules and restrictions, presenting clear advantages to those seeking a presence onthe Internet, but also providing opportunities for both the unscrupulous and alsothose seeking capitalize on Internet business trends. Others have profited byregistering descriptive or generic terms as domain names, such as ,, and , and selling or auctioning them forthousands to millions of dollars. The misappropriation of other's trade marks,business names and personal names by those with no clear right to such names2For more information on the establishment and administration of ccTLDs generally, seeIANA: Country-Code Top-Level-Domains, online: Internet Assigned Names and Numbers("IANA") (last modified: 20 February 2002). Page 5 - 5 -(often for the purpose of persuading the owner of the trade mark, business orpersonal name to pay sums much higher than the registration fees), called"cybersquatting", has given rise to hundreds of lawsuits, and to the development ofdispute resolution systems or specific legislation to protect trade mark owners andothers from exploitation of this kind. This chapter will cover two of the most commonquestions raised in domain name disputes: how does the domain name registrationsystem work, and what can be done if the domain name you want has already beenregistered by someone else?2.0Domain Name Registration2.1“First Come, First Served”Domain names are registered on a first come, first served basis. Domain nameregistrars of gTLDs generally take that position that they act as a neutral party andneither evaluate whether the registration or the use of that name violates or infringesany third party’s rights, nor arbitrate such disputes.32.2Registrars & RegistriesInitially, the company Network Solutions, Inc. (“NSI”) had been granted a monopolyover the registration and administration of gTLDs. At that time, NSI acted as boththe sole registrar (i.e. providing registration services to consumers) and sole registryoperator (i.e. maintaining the database records of gTLD domain registrations). NSI's3See for example Network Solutions, Inc.'s Service Agreement Version Number 5.8, online: I (date accessed: 28 February2002), clauses 10 (domain name disputes), 14 (indemnity) and 17 (representation andwarranties). Page 6 - 6 -registrar monopoly for gTLDs was dismantled in 1998, and ICANN has since beencharged with approving accredited registrars for the .com, .org and .net gTLDs.NSI's registry division, however, (now named VeriSign Global Registry Services)currently acts as the sole gTLD registry operator for the .com, .org and .netregistries.VeriSign's operation of the .org registry is due to expire on December 31, 2002, anda non-profit organization (not yet determined as of February 2002) will then takeover the .org registry. VeriSign's agreement with ICANN to operate the .net registrywill expire on January 1, 2006, and will be subject to a competitive renewal processin which VeriSign and other interested parties may participate. VeriSign'sagreement to operate the .com registry will expire on November 10, 2007, andVeriSign will have a right of renewal for a 4 year term subject to criteria specified byICANN.4For gTLDs alone, as of February 2002, there are at least 150 accredited domainname registrars throughout the world.5These registrars include companies in manycountries, such as Canada, the United States, Switzerland, the United Kingdom,4Network Solutions, Inc., News Release, "Network Solutions Registry Division RenamedVeriSign Global Registry Services" (14 September 2000), online: (date accessed: 28 February2002) for background on the VeriSign/NSI division of services. See The Internet Corporationfor Assigned Names and Numbers ("ICANN"), "Announcement 2 April 2001: ICANNAnnounces Decision on Registry Agreement for .com/.net/.org Domains", online: ICANN (date accessed: 28 February2002). and ICANN, "ICANN Accra Meeting Topic: Reassignment of the .org TLD", online: (last modified: 26 February 2002). Page 7 - 7 -Germany, France, Norway, Spain, Italy, Sweden, Monaco, Kuwait, the Republic ofKorea, China, Taiwan, Japan, Singapore and Australia. The number of countriesrepresented will grow as more accredited registrars become operational. In additionto the geographical and linguistic convenience of choosing a registrar located in theregistrant's home country, the cost of registration may be another factor in choosingwhich registrar to use, since domain name registration fees vary by registrar. Anadditional factor to consider is that if a domain name is registered using a registrarlocated in the United States, the domain name may be subject to the jurisdiction ofthe U.S. Anticybersquatting Consumer Protection Act, which will be discussed ingreater detail below.The above numbers do not include registrars for the 243 country code top leveldomains ("ccTLDs") available as of November 26, 2001.62.3“Unrestricted” Registration Versus “Restricted” RegistrationThe gTLDs .com, .org, .net, .info, and some of the ccTLDs, are administered under“open” or “unrestricted” registration criteria. This means that domain names can beregistered, on a first come, first served basis to any company or individual whoprovides their personal or company contact information, and who pays theprescribed registration fee. The registrant need not prove or declare that it falls5See "List of Accredited and Accreditation-Qualified Registrars" on the website of the InternetC o r p o r a t i o n f o r A s s i g n e d N a m e s a n d N u m b e r s , o n l i n e : (last modified: 25 February 2002).6Consult Internet Names and Numbers Authority, "Root-Zone Whois Information" online: (last modified: 26 November 2001), for a fulllisting of country code domains. Page 8 - 8 -under any particular eligibility criteria, or can be characterized as a particular type ofentity. Therefore, in these "unrestricted" domains, registrants from any part of theworld may register as many names as they like, without the need to prove whatrights, if any, they may have in the name.Many of the ccTLDs, however, are administered with limits on who is eligible toregister domain names, although there is a current trend to implement registrationrules for some ccTLDs which are less restrictive than they have been in the past. Forexample, in order to register domain names in the .ca (Canada), .fr (France) and .us(United States) domains, a registrant is required to show that it has a substantivenational presence in that country. The criteria for national presence that a registrantmust meet may vary from country to country. For example, under the current .caregistration rules, the owner of a .ca domain must demonstrate it has a “Canadianpresence”, such as being a Canadian individual, Canadian corporation, or comeunder the special exception of being a foreign owner of a registered Canadian trademark.7Registrants of .fr (France) domain names must show that they are companieswho are effectively registered in France, or are individuals who reside in France orare of French nationality ("tout organisme demandeur officiellement déclaré enFrance et pour les personnes physiques résidant en France ou de nationalité7The current rules for the .ca (Canada) domain name system became effective November 8,2000. Among other things, these new rules allow .ca registrants to own an unlimited numberof domain names, while the previous rules allowed a registrant to own only one .ca domainname. The new .ca rules also implemented new, specific categories for "Canadian PresenceRequirements", including those mentioned in above, which emphasize a registrant'ssubstantial connection to Canada, and modified the previous rules which placed greaterfocus on a registrant's interprovincial, "national" scope. Consult the Canadian InternetRegistration Authority's website, online at for full text of the .ca rules andrelated policies. Page 9 - 9 -française").8Registrants of .us (United States) domain names must fulfill a "nexus"requirement, for example, being an individual who is a citizen or permanent residentof the U.S., or whose primary domicile is the U.S.; a U.S. corporation; or an entity ororganization (including a federal, state, or local government of the United States, ora political subdivision thereof) that has a bona fide presence in the United States.92.4Choosing gTLDs and ccTLDsThe concentration of registrants in the .com gTLD has led many users to complainthat there is now a shortage of “good” .com names still available for registration.ICANN's approval of the new gTLDs such as .biz, .info, .pro, and .name wasintended to create room in the domain name space for more users to obtain desirednames, and to allow users to co-exist with names meant to differentiate between thetype of registrant or activity associated with the domain names.Some Internet users have welcomed the implementation of the new gTLDs, such as.biz and .info, as general alternatives to the overcrowded .com, .net and .org gTLDs;however, many trade mark owners have also expressed fear that their problems inpolicing registrations amongst the existing gTLDs and ccTLDs will only magnify asadditional gTLDs become operational, since it affords wider opportunities for theirmarks to be registered as domain names by third parties with similar, competingmarks, or by abusive third parties. Some mark owners perceive that the introduction8Association Française pour le Nommage Internet en Coopération, “Charte de nommage pourla zone .fr”, online: (last modified: 4February 2002). Page 10 - 10 -of new gTLDs may also force them to register increasing numbers of these newdomain names, as a defensive measure to prevent cybersquatting on their trademarks.Some registrants have responded to the perceived domain name overcrowding byseeking names in ccTLDs, particularly ones that are administered under"unrestricted" criteria. Some Internet services are attempting to market theseccTLDs as top level domain alternatives to the .com gTLD, for example: .cc (Cocos(Keeling) Islands), .tv (Tuvala), .ws (Western Samoa), .nu (Niue), and .bz (Belize).10In Europe, there is widespread use of the European ccTLDs (for example, the .co.ukdomain names (United Kingdom) is heavily used, and the European Parliament inFebruary 2002 approved the new Internet address extension of .eu).11On one hand,some Internet services actively solicit potential registrants for domains in ccTLDs,hoping that customers will not be deterred by the fact that these are geographicalccTLDs and not gTLDs. On the other hand, some registrants seek ccTLD names,not merely as alternatives to gTLDs, but for the express purpose of operatingwebsites which cater to a specific country's market or appeal to its citizens' sense of9See the NeuStar, Inc. .us registry homepage, usTLD Nexus Requirements, posted online at: (date accessed: 28 February 2002).10See: (.cc) , (.tv) , (.ws) , and(.nu) , (.bz) .11See the European Commission, "The creation of a ".eu" top level domain", online:(date accessed: 28 February 2002). See European Commission, News Release"Commission welcomes European Parliament's endorsement of '.eu' Internet domain name"( 2 8 F e b r u a r y 2 0 0 2 ) o n l i n e : (date accessed: 28 February 2002). Page 11 - 11 -nationalism, as stand alone websites or as a subsidiary page to a multinationalparent company's home page.123.0Trade Mark DisputesTrade mark and domain name rights collide for a number of reasons, including firstcome, first served domain name registration procedures, and the fact that domainnames, as Internet addresses, must be unique worldwide, whereas trade mark lawallows concurrent uses of similar trade marks in different jurisdictions, or concurrentuses within the same jurisdiction of similar trade marks if there is no risk ofconfusion, depreciation of goodwill or misrepresentation.With “unrestricted" domains, especially the highly valued .com domain, first come,first served priority allows anyone to register a domain name, without considerationof whether the registrant owns a trade mark in the name, or whether there could bepotential competition for a domain name from owners of similar trade marks ordomain names. In addition, while distinctive trade marks, with no immediateconnection to their associated goods or services (for example KODAK or EXXON)are often the most valuable marks because of the broad scope of protection theyreceive under trade mark law, highly descriptive or generic domain names (such as or ) often fetch the highest resale prices because oftheir supposed marketing value. While it may be possible to enforce a distinctive12See for example the market research conducted regarding Internet user preferences forchoosing .ca domains: Allan Gregg, "Canadian Attitudes Towards the .ca Domain"(Presentation to the Annual General Meeting of the Canadian Internet Registration Authority, Page 12 - 12 -trade mark against a similar domain name, it may be very difficult to assert trademark rights in a generic domain name and/or to prevent others from registeringsimilar names using trade mark principles.The most objectionable form of improper domain name use is “cybersquatting”. Inthe strictest sense, a “cybersquatter” is someone who purchases a domain namewith the intention of selling it for profit to the trade mark owner. A variant ofcybersquatting is "typo-squatting", which is the practice of registering domain nameswhich are identical to well-known trade marks or domain names except that theycontain spelling errors or keyboarding mistakes (for example, transposed letters, orthe addition or omission of characters commonly found in domain names, such asperiods or hyphens). Another example of improper domain name use may theregistration of a domain name which comprises the trade mark of another, and itsuse with a website displaying objectionable content, such as pornography.These areas of tension give rise to domain name disputes between trade markowners and cybersquatters, trade mark owners who both have legitimate rights, anddomain name and/or trade mark owners interested in the same generic names. Thediscussion below focuses mainly on cybersquatting activities, with some reference toother potential dispute issues.6 December 2001) online: (date accessed: 28February 2002). Page 13 - 13 -3.1Canadian Causes of Action Under Trade Mark LawThere are traditional causes of action in trade mark law on which to base claimsagainst cybersquatting.Depending upon the facts of the case, a cybersquattingvictim could initiate a court action alleging:i)trade mark infringement;13iii)passing off or unfair competition,14on the basis that by includinganother's mark in its domain name, a cybersquatter is directing publicattention to its business as to cause or be likely to cause confusion,and/or on the basis that it may be passing off its services as those ofthe rightful owner; and/orii)depreciation of goodwill,15if the use by a cybersquatter is likely tohave the effect of depreciating the value of the goodwill attached toanother's marks.Relative to the United States, there have been only a handful of court decisions inCanada involving domain names, and most involve interlocutory injunctionapplications where there was no determination on the merits.16So far, most ofthese decisions have favoured protecting the rights of registered trade mark owners,13In Canada, see Sections 19 and 20, Trade-Marks Act, R.S.C. 1985, c. T-13.14In Canada, see Section 7, Trade-Marks Act, R.S.C. 1985, c. T-13.15In Canada, see Section 22, Trade-Marks Act, R.S.C. 1985, c. T-13.16For example: Fitzwilliam v. Rolls-Royce plc., [1999] F.C.J. No. 527 (F.C.T.D.); Canada PostCorp. v. Epost Innovations Inc., [1999] F.C.J. No. 1297 (F.C.T.D.); Epost Innovations Inc. v.Canada Post Corp., [1999] B.C.J. No. 2060 (B.C.S.C.); Bell Actimedia inc. v. P u z o(Communications Globe Tete), [1999] F.C.J. No. 683 (F.C.T.D.); ITV Technologies Inc. v.WIC Television (1997), 77 C.P.R. (3d) 495 (F.C.T.D.); Tele-Direct (Publications) Inc. v.Canadian Business Online Inc., [1997] F.C.J. No. 1387 (F.C.T.D.); and Peinet Inc. v.O’Brien, [1995] P.E.I.J. No. 68 (P.E.I.S.C.). Page 14 - 14 -provided there is evidence of irreparable harm. Some Canadian judgments haveeven considered similar issues as those addressed under the ICANN UniformDomain Name Dispute Resolution Policy, discussed in greater detail below.17One Canadian case has suggested the possible reluctance of the courts to protectgeneric domain names. In Toronto.com v. Sinclair and Cole,18the Federal Courtrefused an application for an interlocutory injunction by a partnership of the TorontoStar and Bell Actimedia, the owner of the domain name , who soughtto enjoin the use of , and the website operating at that address. Inaddition to registering the domain name , the plaintiffs had applied forthe name as a trade mark and received a first refusal letter, on the basis ofdescriptiveness, from the Canadian Trade-marks Office. The plaintiffs operated awebsite with information about events in the city of Toronto. The defendants hadregistered the domain name for a business about Internet activity inthe city. The defendants argued that geographic names are unsuitable for trademark protection, where there is no evidence of secondary meaning, and theysubmitted evidence of over a thousand domain names including the word Torontoand several informational websites that used the word Toronto in the domain name.The Federal Court found that the plaintiff's evidence was insufficient to demonstratethat it would suffer irreparable harm from the defendant's activities, and that the17See, for example, Itravel2000.com Inc. v. Fagan, [2001] O.J. No. 943 (Ont. Sup.Ct.),discussed below, regarding the domain name . The court granted an injunction tothe plaintiff, and considered issues such as the similarity of the domain name to the plaintiff'sbusiness and trade names, whether the defendant had a legitimate interest in the name. Thecourt further held that purpose for which the defendant had registered the domain name wasto sell it for a profit. Page 15 - 15 -plaintiff's evidence did not show any diminishment of the goodwill in ,or the ability of the website to attract advertisers. It is difficult to tell from the reasonsissued the extent to which the generic nature of the domain name may have affectedthe decision. The decision suggests, however, that if domain name registrants followtrade mark principles to select inherently distinctive domain names, they may createstronger and more easily enforceable rights in those domain names under trademark law.The subsequent decision in Itravel2000.com Inc. v. Fagan,19suggests that in somecases courts may favour protecting the rights of prior trade mark users or owners ofmarks with generic properties, at least in the context of an interlocutory injunction. Inthis case, the defendant had registered the domain name , and hadowned a pending Canadian trade mark application for ITRAVEL.CA based on usesince March 1999.20The plaintiff did not own any domain names including the wordITRAVEL, and its pending trade mark application for ITRAVEL was filed one monthlater than the defendant's application, but was based on an earlier date of first use(October 1998).21The trade mark of the defendant appeared to cover, in part,similar or related travel services. There was also evidence of at least six other priorpending Canadian trade mark applications for marks consisting of or including theword ITRAVEL, owned by parties other than the plaintiff or defendant, and evidence18(2000), 6 C.P.R. (4th) 487 at 492 (F.C.T.D.) (Heneghan J.).19[2001] O.J. No. 943 (Ont. Sup.Ct.), also discussed above regarding the importation of UDRPprinciples into a court analysis.20Canadian trade mark application number 1,086,104 for ITRAVEL.CA.21Canadian trade mark application number 1,089,892 for ITRAVEL. Page 16 - 16 -of use of the word ITRAVEL on the Internet by other third parties located in oroffering services in Canada, several of which used the word ITRAVEL as a secondor third level domain. The Ontario Superior Court, however, granted the plaintiff'srequest for an interlocutory injunction restraining the defendant from selling,transferring, disposing of, pledging or otherwise encumbrancing or dealing with orusing the domain name. The court was satisfied that irreparable harmwould result if the injunction were not granted and the defendant were allowed tomake use of the domain name, in particular to sell it to another party in the UnitedStates or elsewhere, since the plaintiff would be deprived of its "property" (thedomain name) and would have no certainty of being able to recover it subsequently.The court did not, however, grant the plaintiff's alternative request to transfer thedomain name.To evaluate how a Canadian court may rule on the merits of a domain name dispute,it may also be helpful to look to U.S. and U.K. cases for guidance, some of which willbe discussed in the next section of this paper. It should be noted that many U.S.cases rely heavily on the U.S. cause of action for trade mark dilution, grounded inthe Federal Trademark Dilution Act of 1995, Lanham Act Section 43(c).22Dilutionclaims aim to protect famous trade marks from unauthorized commercial uses of amark or trade name, if such use begins after the mark has become famous andcauses dilution of the distinctive quality of the mark.23The evaluation of a dilution2215 U.S.C. 1125(c).23Federal Trademark Dilution Act, 15 U.S.C. §1125(c)(1). Page 17 - 17 -claim is less restricted than that of an infringement or passing off claim -- it avoidsthe difficulties of meeting the confusion test for trade mark infringement.3.2U.S. & U.K. Cases on CyberpiratesAlthough there are a number of court decisions which considered cybersquattingissues prior to the implementation of the U.S. Anticybersquatting ConsumerProtection Act, discussed in more detail below, two cases are frequently citedbecause they reflect the general attitude of the courts that cybersquatting will not betolerated: an American decision, Panavision v. Toeppen,24and a U.K. decision,Marks & Spencer PLC v. One in a Million.25The domain name registrants in bothcases were ordered to transfer their domain names to the plaintiff trade markowners.In Panavision v. Toeppen, the defendant had made a business out of registering thedomain names of well-known marks and exacting payment from the marks’ ownersfor the return of those marks. Toeppen did not, however, use the domain names tosell good or services, raising the issue of whether there was actual “use” of the trademarks, so as to result in a finding of infringement of passing off. The issue is onewith relevance in Canada, since both trade mark infringement and depreciation ofgoodwill require there to be an unauthorized "use" of the registered trade mark. Forthere to be “use” of a trade mark registered for goods in Canada the trade mark24Panavision International v. Toeppen 945 F.Supp. 1296 (C.D. Cal. 1996) (hereinafterPanavision).25Marks & Spencer PLC v. One in a Million (1997), [1998] FSR 265 (H.C. Chan. Div.); aff’d(1998)(U.K. Ct. App.) (hereinafter One in a Million). Page 18 - 18 -must appear on the goods or their packages, or be in some other way associatedwith the goods at the time of sale. For trade marks registered for services inCanada, the mark must appear in advertising or be displayed in the performance ofthe services.26In the U.S. Panavision case, Toeppen was held liable for trade mark dilution. TheCourt held that registering the trade marks of another as domain names for thepurpose of selling them back to the trade mark owners went against the purpose ofthe federal dilution statute, and was not a permissible trade mark use. The courtfurther held that Toeppen’s actions lessened, if not eliminated, the capacity of thefamous marks to identify wares or services. The court, however, admitted that forthe purposes of trade mark dilution, mere registration of a domain name, withoutmore, is not a typical "commercial use" of the trade mark on goods or with services.However, in this case, the defendant had gone beyond the mere registration ofdomain names and had registered them with the intent to sell them for a profit totrade mark owners, thereby trading on the value of the trade marks, and the courtfound that this activity constituted a commercial use under the dilution statue.In the U.K. case of Marks & Spencer PLC v. One in a Million,27the defendantssystematically registered domain names containing the trade marks of well-knownBritish companies, with the intent to sell them back to the trade mark owners. Noneof the sites were actively in use. The U.K. Court of Appeal held that the defendants26Section 4, Trade Marks Act, R.S.C. 1985, c. T-13. Page 19 - 19 -were liable for passing off and trade mark infringement. Although the plaintiffs couldnot prove that the trade marks were in use in association with goods or servicescovered by the trade mark registrations by being part of the domain name, the courtheld that the U.K. Trade-Marks Act made it an infringement to use a famous mark onunrelated products or services, where such use could harm the distinctiveness orreputation of the mark. The plaintiffs' marks were sufficiently distinctive and theirreputations so great that trade mark infringement resulted. (This seems to be adecision based, like many U.S. cases, on a “dilution” analysis.) The court furtherheld that the tort of passing off was wide enough to include situations such as thisone, where the "use" of a trade mark was registering it as a domain name, withintent to sell the domain name for a profit.Other U.S. decisions have reflected the courts’ trend to curtail cybersquattingactivities in cases where the plaintiff has shown that the domain name registrant is,in fact, cybersquatting and acting in bad faith.28Other cases reflect the morecomplicated analysis of competing rights for domains in the same gTLD (namely,.com), for example between owners of similar trade marks or trade names,29or27(1997), [1998] FSR 265 (H.C. Chan. Div.); aff’d (1998)(U.K. Ct. App.).28See for example, Intermatic Inc. v. Toeppen 947 F. Supp. 1227 (N.D. Ill. 1996), against thesame defendant as in Panavision, supra note 25; Microsoft Corp. v. Karr,No. 98-04245 (S.D.Texas), in which a court ruled in favour of Micrsoft Corp., ordering a Texan cybersquatterswho had registered, among others, the domain names ,, , , and , torelinquish these domain names to Microsoft Corp.29See, for example, eToys.com v. etoy.com (Los Angeles Sup. Ct. November 29, 1999)(unreported), which settled on January 25, 2000, see articles: M. Mirapaul, "Etoys Offers toDrop Suit Against Artists Group" New York Times (29 December 1999) online: (date accessed: 28February 2002), and P. Jacobus, "eToys settles Net name dispute with etoy" C N E TN e w s . c o m ( 2 5 J a n u a r y 2 0 0 0 ) online: (date accessed: 28 February 2002); Nissan Motor Co. Ltd. v.Nissan Computer Corp. (C.D. CA, CV 99-12980 March 23, 2000); Juno Online Services, L.P.v. Juno Lighting, Inc. 979 F. Supp. 684 (N.D. Ill. September 29, 1997); Interstellar StarshipServices Limited v. Epix, Inc. 1997 U.S. Dist. LEXIS 18873 (D. Ore. November 20, 1997);Toys “R” Us v. Akkaoui 1996 WL 772709 (N.D. Cal. October 29, 1996); Giacalone v.Network Solutions Inc., 1996 WL 887734 (N.D. Cal. June 14, 1996); and Toys “R” Us, Inc. v.Feinberg 26 F. Supp. (2d), 639 (S.D.N.Y. Oct. 28, 1998).30See Bally Total Fitness Holding Corporation v. Faber 29 F. Supp. 2d 1161 (U.S. Dist. Ct.,C . D . C a l i f . D e c e m b e r 2 1 , 1 9 9 8 ) , r e g a r d i n g a w e b s i t e a t, on which the words "Bally sucks" appeared. Thisuse of the BALLY trade mark, not as part of the domain name, and for consumercommentary, was held to be protected under the First Amendment. The court further foundthat the anti-dilution statute did not prohibit such unauthorized use of a trade mark for non-commercial expression. It could be questioned whether the same analysis would apply underCanadian law.31Avery Dennison Corp. v. Sumpton, 189 F. 3d 868 (9th Cir. Cal. 1999), rev’g 999 F. Supp.1337 (C.D. Cal. 1998). The district court recognized that .com was intended for businesses,and .net was intended for networks. The appeal court accepted the district court's finding inthis regard, although it noted that there was evidence on the record to show this distinctionwas "illusory". Page 21 - 21 -4.0Uniform Domain Name Dispute Resolution Policy ("URDP")In response to the high cost and uncertainty of domain name litigation, frustrationwith the previous NSI dispute policies, the decentralization of gTLD registrars, andthe burgeoning number of domain name disputes, on October 24, 1999, ICANNimplemented a dispute arbitration procedure, which is regulated by ICANN’s UniformDomain Name Dispute Resolution Policy (“UDRP").32The UDRP complaint processis an expedited administrative procedure which is meant to allow disputes involvingclear cases of abusive domain name registration to be resolved more quickly andcheaply than through litigation. All registrars in the .com, .net, .org, .info, .biz and.name top-level domains follow the UDRP. A number of country codes are alsosubject to the UDRP.33A Canadian dispute resolution policy for the .ca domain hasbeen finalized, but has not yet been implemented (see Section 7.0, below, for furtherdetails.)A UDRP procedure permits a complainant, i.e. the trade mark owner, to file a writtencomplaint with an ICANN-approved dispute resolution service provider.34Once acomplaint has been filed, and the provider has accepted that the complaint fulfills all32ICANN’s Uniform Domain Name Dispute Resolution Policy is available online at (last modified: 5 February 2002).33As of February 2002, dispute resolution service provider WIPO indicates that these include:.ag (Antigua and Barbuda); .as (American Samoa); .bs (Bahamas); .bz (Belize); .cc (Cocos(Keeling) Islands); .cy (Cyprus); .ec (Ecuador);.fj (Fiji); .gt (Guatemala); .la (Laos);.na(Namibia); .nu (Niue); .pa (Panama); .ph (Phillipines); .pn (Pitcairn Islands); .ro (Romania); .tt(Trinidad and Tobago); .tv (Tuvala); .ve (Venezuela); .ws (Western Samoa). See WIPO,D i s p u t e P o l i c i e s a n d P r o c e d u r a l R u l e s f o r c c T L D s , o n l i n e : (date accessed: 28 February 2002).34See ICANN, Approved Providers for Uniform Domain Name Dispute Resolution Policy, infranote 37. See also the procedure outlined in the ICANN Rules for Uniform Domain NameDispute Resolution Policy( a p p r o v e d O c t o b e r 2 4 , 1 9 9 9 ) , o n l i n e : (last modified: 5 February 2002). Each Page 22 - 22 -the formal requirements of filing, the provider sends an Official Notification to thedomain name owner (the "respondent") that a proceeding has been commenced. Itis mandatory that respondents submit to the administrative proceeding.35Accordingto the policy and accompanying rules, the date of the Official Notification is deemedto be the date of commencement of the proceeding, and the respondent has twentycalendar days from this date to file a response with the provider. In the moststreamlined scenario, where neither party elects to have the dispute decided by athree-member panel, a decision may be rendered within a few weeks of a responsebeing filed: the provider must choose a single panelist within five calendar days ofreceiving the respondent's response; the panel must then forward its decision, inwriting, to the provider within fourteen calendar days of its appointment. Theprovider then forwards the panel's decision to the parties in the dispute.Opting to initiate a UDRP administrative proceeding does not preclude any of theparties from commencing a court action, either before or after a complaint has beenfiled,36nor does it prevent the parties from reaching a settlement at any time. In fact,if either party disagrees with the panel's decision in a UDRP proceeding, either partyhas ten calendar days, from the date the decision is received from the panel by thedispute resolution service provider, to bring an action relating to the domain name ina court of law and to notify the service provider, domain name registrar and the otherdispute resolution service provider has its own supplemental rules of procedure, which areaccessible on their respective websites.35Article 4(a), UDRP.36If a legal proceeding is brought simultaneously with a UDRP proceeding, however, somecourts may choose to stay the legal proceeding pending the outcome of the U D R P Page 23 - 23 -party involved that such an action has been initiated, otherwise the decision isimplemented. Courts are not bound by a panel's decision under the UDRP,37andalthough Article 4(a) of the UDRP prevents a panel's decision from beingimplemented if a court action is subsequently commenced (as described above),that subsequent court action is not an appeal of the decision, but a right of the partyto bring an action in court under the laws of the mutual jurisdiction chosen by theComplainant. Since the implementation of the UDRP, there have been a number ofattempts to bring actions subsequent to a UDRP panel's ruling.38Currently, there are four dispute-resolution service providers: the World IntellectualProperty Organization (“WIPO”), located in Geneva, Switzerland; National ArbitrationForum (“NAF”), located in Minneapolis, U.S.A.; CPR Institute for Dispute Resolution,located in New York City, U.S.A., and Asian Domain Name Dispute Resolutionproceeding. See, for example, Weber-Stephen Products Co. v. Armitage Hardware andBuilding Supply, Inc. Case No. 00-C-1738 (N.D. Illinois May 3, 2000).37As suggested by Article 4(k) of the UDRP, and as held by the court in Weber-StephenProducts Co. v. Armitage Hardware and Building Supply, Inc. Case No. 00-C-1738 (N.D.Illinois May 3, 2000).38Article 4(k) of the URDP provides for the right of a party to challenge a decision of a UDRPpanel, and refers to the Complainant's choice of "mutual jurisdiction" in the event of achallenge to the proceeding (as defined in the accompanying Rules for Uniform DomainName Dispute Resolution Policy, online: ICANN (last modified: 5 February 2002), namely: the jurisdiction of the respondent,and/or the jurisdiction of the domain name registrar. Some examples of court actionsfollowing a URDP decision include: the Order for Preliminary Injunction granted to the plaintiffin Referee Enterprises, Inc. v. Planet Ref, Inc., Right Sports, Inc. Case No. 00-C-1391 (E.D.Wisc., Jan. 24, 2001), subsequent to a decision in Referee Enterprises, Inc. v. Planet Ref,Inc. NAF Case No. FA94707 (June 26, 2000), regarding the domain name .The plaintiff in the court action was the complainant in the UDRP proceeding, which wasdecided in favour of the respondent; Sallen v. Corinthians Licenciamentos LTDA, 273 F. 3d14 (1stCir. 2001), which established that it may be appropriate for a party to bring an actionunder the Anticybersquatting Consumer Protection Act following a UDRP decision. Page 24 - 24 -Centre ("ADNDRC").39The fees for a proceeding vary slightly between the fourproviders. For example, as of February 2002, for complaints involving one domainname, the dispute-resolution service providers charge fees of approximatelyUSD$1,150 to US$2,000 for a single person panel, and USD$2,500 to $4,500 for athree person panel. Each provider sets its own rates, and policies regardingpotential extra charges (for example, for proceedings involving multiple domainnames, correspondence by methods other than e-mail, and charges for withdrawinga complaint). These fees vary by provider, and are continuously updated on theirrespective websites. In comparison with normal legal fees and costs incurred in acourt action, and the length of time involved to reach conclusion, ICANN UDRPproceedings can be significantly expedited and are less expensive. They aretherefore attractive to trade mark owners with uncomplicated disputes that involveclear cases of abusive domain name registration.To make a successful claim, a complainant in a UDRP proceeding must prove all ofthe specified elements in Article 4(a) of the URDP:39See ICANN, Approved Providers for Uniform Domain Name Dispute Resolution Policy online:ICANN (last modified: 5 February2002), for a list of providers with links to each website and fee information. Formerly,eResolution, located in Montreal, Canada, acted as dispute service provider for UDRPproceedings from the time of implementation of the UDRP but ceased accepting proceedingscommenced after November 30, 2001. ADNDRC began accepting proceedings as ofFebruary 28, 2002. ADNDRC was formed by the Hong Kong International Arbitration Centre(HKIAC) and the China International Economic and Trade Arbitration Commission (CIETAC),of Beijing, to make UDRP proceedings more accessible to Asian Pacific Rim and Asianlanguage users. See ICANN, News Release, "ICANN Announces New Dispute ResolutionProvider in the Asia Pacific Region" (3 December 2001) online: (date accessed: 28February 2002). Page 25 - 25 -(i)that it owns a trade mark that is identical or confusingly similar to thedomain name;(ii)that the domain name registrant has no legitimate rights in the domainname; and(iii)that the domain name registrant has registered and used the domainname in bad faith.At least 4357 decisions involving 7561 domain names have been rendered as ofFebruary 14, 2002: of these, approximately 77 percent have favouredcomplainants.40Among the approximately 19 percent of decisions favouringrespondents, many involved situations in which the trade mark owner was unable todemonstrate that the domain name registrant was without legitimate rights in thename, and/or that the domain name had been registered and used in bad faith.Some examples of scenarios that have failed to support all elements of the three-part test:i)both parties owned similar trade marks, or the domain name ownerwas commonly known by a similar name (showing competinglegitimate interests, and negating the claim that the domain nameowner has no legitimate rights to the name);4140Statistical Summary of Proceedings Under Uniform Domain Name Dispute Resolution Policy,online: ICANN . See, for example, Frank Jones Pearson v.Byerschoice, NAF Case No. FA0092015 (March 9, 2000) re: ;Digitronics Inventioneering Corporation v. @Six.Net Registered, WIPO Case No. D2000-0008 (March 1, 2000) re: and ; Unitil Resources v. Robert Ampe, NAFCase No. FA0093553 (March 14, 2000) re: and ; ShelleyHarrison v. Coopers Consulting Inc., eResolution Case No. AF-0121 (April 4, 2000) re: Page 26 - 26 -ii)the domain name owner had made preparations to use the domainname, or was operating, or had operated, a web site at that address inconnection with a bona fide offering of goods or services, prior to anynotice to him or her of the dispute (negating the bad faith claim);42iii)the offending domain name was a descriptive, generic or common termin everyday language (negating claims of illegitimacy and bad faith).43; and Breakthrough Software, Inc. v. Hendrick Huigen, eResolution CaseNo. AF-0122 (April 13, 1999) re: .In the dispute above, both parties had phonetically equivalent registeredtrade marks, and the domain name owner had simultaneously registered .com addresses forits own mark (BYERS CHOICE) and identical spelling to the complainant’s mark (BUYERSCHOICE), so that customers could find the site if they misspelled the address. In the dispute, the respondent had a registered trade mark that predated the useand application by the complainant of its trade mark.42See, for example, Telaxis Communications Corp. v. William E. Minkle, WIPO Case No.D2000-0005 (March 5, 2000) re: and ; Digitronics InventioneeringCorporation v. @Six.Net Registered, WIPO Case No. D2000-0008 (March 1, 2000) re: and ; Unitil Resources v. Robert Ampe, NAF Case No. FA0093553(March 14, 2000) re: and ; CRS Technology Corp. v.CondeNet Inc., NAF Case No. FA0093547 (NAF March 28, 2000) re: ;Microcell Solutions Inc. v. B-Seen Design Group Inc., eResolution Case No. AF-0131 (May2, 2000) re: ; E. Remy Martin v. Ramy Fahel, WIPO Case No. D2001-1026(January 18, 2002) re: ; and The Prudential Insurance Company of America v.PRU International, NAF Case No. FA0111000101800 (January 18, 2002) re: .43See, for example, Shirmax Retail Ltd. v. CES Marketing Group Inc., eResolution Case No.AF-0104 (March 20, 2000) re: ; General Machine Products Company, Inc. v.Prime Domains, NAF Case No. FA0092531 (March 2, 2000) re: ; CRSTechnology Corp. v. CondeNet Inc., NAF Case No. FA0093550 (March 28, 2000) re:; Astro*Carto*Graphy Living Trust v. Advanced Locational Research, NAFCase No. FA0003000094267 (April 26, 2000) re: ; MicrocellSolutions Inc. v. B-Seen Design Group Inc., eResolution Case No. AF-0131 (May 2, 2000) re:; Scorpions Muskiproductions und Verlagsgesellschaft MBH v. Alberta Hot Rods,WIPO Case No. D2001-0787 (November 7. 2001) re: ; eMoney Group Inc.v. Eom, Sang Sik NAF Case No. FA0012000096337 (March 26, 2001) re: ;and Ultrafem Inc. v. Warren R. Royal, NAF Case No. FA0106000097682 (August 2, 2001)re: .In Section 2 of the decision, above, Panelist David Sorkin wrote: “Where thedomain name and the trade mark in question are generic - and in particular where theycomprise no more than a single, short, common word - the rights/interests inquiry is morelikely to favour the domain name owner.” In Section C of the decision, above, thepanel stated: “registration of a common or generic name such as FIDO can hardly beconsidered indicative of bad faith, absent other factors [...] Even when a common name hasbecome highly distinctive of a particular product because massive advertising has generated Page 27 - 27 -Where the trade mark in question is a coined word, however, and thesubject of an uncontestable trade mark registration, some panelistsmay be reluctant to find that the trade mark has become a genericword without substantial evidence.44iv)complex factual issues must be resolved, such as evidence of a priorrelationship between the trade mark owner and domain name owner,the terms of which are unclear and which should be resolved in a courtof law;45v)registration (and often, use) of the domain name predated the earliestuse or registration of the complainant’s trade mark (negating claims ofillegitimacy and bad faith);46and/orsubstantial secondary meaning, another party might legitimately register the common namebecause of its primary meaning.”44See, for example, the majority decision in Sony Corporation v. Times Vision, Ltd. NAF CaseNo. FA0009000095686 (March 9, 2001), re: the domain name . Thedissenting panelist disagreed with the majority, holding that the extent of evidence of genericuse of a mark necessary to rebut a claim of bad faith in a UDRP proceeding, should be lessthan that required to invalidate a trade mark under trade mark law.45See, for example, Adaptive Molecular Technologies, Inc. v. Priscilla Woodward, WIPO CaseNo. D2000-0006 (February 28, 2000) re: . In this case, the domain nameowner was an “authorized stocking distributor” of the trade mark owner’s product, and therewere significant factual issues as to whether the complainant had legally acquiesced to thedomain name owner’s use of the trade mark, or whether such use was a nomative fair use.The panel decided these were trade mark issues that were outside the scope of theproceeding, and were for the courts to decide. See also United States Postal Service v.Postoffice.com, Inc. NAF Case No. FA0012000096313 (March 19, 2001), re:, in which the majority found that the respondent's evidence of bona fide useof the domain name, and of use of the words "post office" in every day language, in contextsother than as a trade mark of the U.S. Postal Service, were sufficient to rebut a claim of badfaith, and that it was beyond the jurisdiction of the panel to enforce the complainant's rights inits mark under a U.S. Criminal Statute.46See, for example, Shelley Harrison v. Coopers Consulting Inc., eResolution Case No. AF-0121 (April 4, 2000) re: ; Unitil Resources v. Robert Ampe, NAF Case No.FA0093553 (March 14, 2000) re: and ; and BusinessArchitecture Group, Inc. v. Reflex Publishing, NAF Case No. FA0104000097051 (June 5,2001) re: . Page 28 - 28 -vi)specifically, Article 4(a)(ii) of the URDP requires that the domain namehas been registered (or acquired) and is being used in bad faith, butthe evidence shows that only registration or use was in bad faith, butnot both;47Some panels have denied complaints because even the first element has not beensatisfied: namely, the complainant has not proven it owns a trade mark which isidentical or confusingly similar. For example, some panels have dismissedcomplaints in which the complainant attempted to rely on a registered trade mark ofwhich it was not the named owner in title.48When the registry database could notconfirm that the offending domain name was, in fact registered, a panel held that thecomplainant failed to prove this first element.49Where a complainant's claim to thecontested domain name arose out of a contractual dispute rather than trade markrights, and the complainant could not establish that it owned any trade mark47See, for example, Microcell Solutions Inc. v. B-Seen Design Group Inc., eResolution CaseNo. AF-0131 (May 2, 2000) re: ; and Shelley Harrison v. Coopers Consulting Inc.,eResolution AF-0121 (April 4, 2000) re: . See in particular, TelaxisCommunications Corp. v. William E. Minkle, WIPO Case No. D2000-0005 (March 5, 2000) re: and . In the decision, the panel noted that while itwas a bad faith use that the domain name registrant redirected the disputed domain names,after the dispute had begun, to websites of the complainant’s competitors or to pornographicsites, the evidence showed that the registration of the domain names had been in good faith,and that prior to the dispute the domain name registrant had made preparations to use thedomain name in offering real estate services.48Backstreet Boys Productions, Inc. v. Zuccarini, WIPO Case No. D2000-1619 (March 27,2001) re: and other names. The complaint was subsequently refilledin WIPO Case No. D2001-0654, naming the trade mark owner as complainant. TheComplaint succeeded in the second proceeding.49Heel Quik, Inc. v. Michael H. Goldman, NAF Case No. FA0092528 (March 1, 2000) re: and . Page 29 - 29 -(registered or unregistered), business name or trade name that remotely resembledthe domain name, the complaint was denied.50In two National Arbitration Forum decisions, the panel refused to recognize thecomplainant’s claim in its trade mark rights, where those rights were based oncommon law use of and pending applications for the marks, rather than registeredtrade marks.51It is unclear from the brevity of these written decisions whether thecomplainants lacked proof of their rights in their alleged common law marks. Withoutfurther clarification of the facts in each case, these decisions seem inconsistent withthe UDRP requirement of trade mark ownership, which should be broad enough tocover both registered and unregistered marks (at least for mark owners relying ontrade marks used in jurisdictions that recognize unregistered rights). The morerecent line of decisions under the URDP have recognized the common law trademarks of domain name registrants in support of their claims of legitimate rights intheir domain names.52Apparent inconsistencies in the interpretation of the URDP50See Drakken Ltd. v. Noname.com, eResolution Case No. AF-0190 (July 2, 2000), re:. In that case, the complainant had purchased the contested domain namefrom another party. The registration expired, because the vendor had failed to pay therenewal fees, and the respondent subsequently registered the domain name. The panelnoted that while the complainant might be entitled to remedies in another forum against thevendor or the domain name registrar, the complaint failed to meet the requirements of theURDP.51See Jeremy Goldberg v. Rugly Enterprises, NAF Case No. FA0092975 (March 2, 2000) re:, , , and; and Western Hay Company v. Carl Forester, NAF Case No. FA0093466(March 3, 2000) re: and .52See in particular Shelley Harrison v. Coopers Consulting Inc., eResolution Case No. AF-0121(April 4, 2000) re: , in which the panel considers the relevance of commonlaw trade marks and finds that the domain name registrant’s acquired common law trademark right to use the name LAUNCHPAD gave it a legitimate interest in the continued use ofits domain name. Page 30 - 30 -occur, however, since the decisions of one panel are not binding on another, andeach decision is heavily fact-based.5.0U.S. Anticybersquatting LegislationThe Anticybersquatting Consumer Protection Act ("ACPA")53was enacted onNovember 29, 1999, to target trade mark cyberpiracy specifically. It was intended toaddress a number of difficulties commonly encountered by plaintiffs attempting tosue cybersquatters in court for trade mark infringement and/or dilution, for example,proving that a plaintiff's trade marks have been "used" by the domain name ownerunder trade mark law, when the domain name owner has merely offered to sell thedomain name, and in fact, the domain name is not in use and does not resolve (i.e.connect) to an active server. Another common difficulty for a plaintiff is locating andnaming a proper defendant, when the listed registrant for the domain name is afictional entity or individual, and/or the registrant used false contact information tosecure the domain name registration.The ACPA prohibits the registration of, trafficking in, or use of a domain name wherethere exists a bad faith intent to profit from the goodwill of a related trade mark. Inaddition to proving bad faith, a plaintiff must also prove that the offending domainname is either: identical or confusingly similar to a trade mark that was distinctive atthe time the domain name was registered; or that the domain name is identical to,5315 U.S.C. 1125(d). Page 31 - 31 -confusingly similar to, or will dilute a trade mark that was famous at the time thedomain name was registered.A key aspect of the legislation is that it permits in rem civil proceedings, against thedomain name itself, if the trade mark owner is unable to find or obtain personaljurisdiction over the domain name registrant. Such proceedings may be particularlyuseful if the registrant cannot be reached or has given false information to thedomain name registrar so as to render him or her unreachable. To determinejurisdiction for an in rem proceeding, the Act deems the situs of a domain name isdeemed to be in the judicial district in which either the domain name registrar orregistry is located, or where documents sufficient to establish the control andauthority regarding use and disposition of the domain name are deposited with thecourt. In order to use the in rem provision, a plaintiff must exercise good faith effortsto contact the domain name registrants.U.S. courts have held that in rem provisions of the legislation are constitutional anddo not violate due process. A plaintiff bringing suit under the in rem provisions of theACPA need not prove that the domain name has sufficient minimum contacts tosupport personal jurisdiction in the forum state. Rather, a plaintiff must show that itcannot assert personal jurisdiction over the domain name owner54and that the casemeets the requirements for in rem jurisdiction set out in the ACPA, for example, if54See, for example, Heathmount A.E. Corp. v. Technodome.com, Case No. CA-00-00714-A,2000 U.S. Dist. LEXIS 10591 (E.D. Va., July 24, 2000). Page 32 - 32 -the domain name was registered through a registrar or registry located in the judicialdistrict in which the suit is brought.55The ACPA generally gives courts the authority to grant injunctions, including theforfeiture, cancellation or transfer of the domain name to the trade mark owner, aswell damages and statutory damages in certain cases. Remedies in an in remaction are limited to forfeiture, cancellation or transfer of the domain name. Thelegislation also explicitly provides that the domain name registrar, registry or otherdomain name authority shall not be liable for injunctive relief or damages except inthe case of bad faith or reckless disregard, including a willful failure to comply withsuch court orders. This provision is clarifies the existing law regarding registrarliability, in light of a number of prior U.S. cases in which courts refused to hold theregistrar NSI liable for inducing the cybersquatting activities of registrants.566.0Jurisdiction and Domain Name DisputesIt is beyond the scope of this chapter to examine the vast body of cases consideringjurisdiction on the Internet.57It is particularly important to note that the casesconsidering jurisdiction in online defamation, contractual, and other types of disputes55See for example Cf. Cable News Network L.P. v. CNNews.com, 162 F. Supp. 2d 484 (E.D.Va. 2001), discussed in greater detail below under the heading "Jurisdiction and DomainName Disputes". See also Caesars World, Inc. v. CAESARS-PALACE.COM, 54U.S.P.Q.2D (BNA) 1121 (E. D. Virginia 2000), in which the Eastern District Court of Virginiadenied the defendants' motion to dismiss for lack of in rem jurisdiction.56See, for example, Lockheed Martin Corporation v. Network Solutions Inc. 985 F. Supp. 949(C.D. Cal. 1997). See also NSI v. Umbro International, Inc., Record No. 991168 (Sup. Ct.Va., April 21, 2000).57For a more detailed discussion of Internet jurisdiction issues from an intellectual propertyperspective, see J. Lee, "Jurisdiction on the Web: Where is "Here" in Cyberspace?" (Paperpresented at Intellectual Property Summit 2002, Infonex Conferences, 23 January 2002). Page 33 - 33 -do not always apply in intellectual property disputes, since they often do not addressthe technicalities of intellectual property law. Such cases, for example, may often bedifferentiated from those in which trade mark infringement or passing off is claimed,since in these latter cases, courts must often consider the requirements of proving"use" of a trade mark (in association with goods or services).To complicate matters, domain name disputes often involve domain names that: areregistered, yet do not resolve to active websites (and are therefore not "used" astrade marks); are offered for sale by cybersquatters but not used as trade marks perse; and/or are used for fan sites, information sites or "gripe sites" (criticism). Whilesome courts have expanded the definition of, for example "passing off" to includecybersquatting,58recognition of the problems with this technicality of trade mark lawled to the adoption of special policies such as the ICANN Uniform Domain NameDispute Resolution Policy for arbitration of domain name disputes, and theAnticybersquatting Consumer Protection Act, in order to address some of these"quirks" of domain name disputes, and define the proper forum in which one maybring proceedings under those rules.Regarding the ACPA, we have discussed above that where personal jurisdictioncannot be obtained against a domain name registrant, an in rem action against thedomain name itself may be brought in the forum where the domain name registrar orregistry, is located, or where documents sufficient to establish the control and58Marks & Spencer PLC v. One in a Million (1997), [1998] FSR 265 (H.C. Chan. Div.); aff’d(1998)(U.K. Ct. App.). Page 34 - 34 -authority regarding use and disposition of the domain name are deposited with thecourt. For example, in Cf. Cable News Network L.P. v. CNNews.com,59the in remprovision was used by a plaintiff, headquartered in Atlanta, Georgia, to bring anaction alleging infringement of its CNN trade mark in Virginia, against a Chinesedefendant. The registrar of the domain names was located in China, however, theregistry for all .com domain names at the time of the proceeding was VeriSign, Inc.,located in Virginia.60The court held that in rem jurisdiction was constitutionallyproper when a court sits in the same district in which the registry is located, in thiscase, Virginia.61In Fleetboston Financial Corp. v. Fleetbostonfinancial.com,62thecourts further confirmed that jurisdiction for the purposes of an in rem proceeding isnarrowly defined. The Fleetboston case was dismissed for lack of jurisdictionbecause the neither the registrar nor registry was located in the forum jurisdiction,and the domain registrant was located in Brazil with no apparent contacts to the U.S.The only connection to the forum was the location of the plaintiff, however, the courtnoted that the in rem provisions of the ACPA do not provide for the location of theplaintiff as a basis for an in rem proceeding in that jurisdiction.59162 F. Supp. 2d 484 (E.D. Va. 2001).60See the section entitled "Registrars & Registries", above.61There was argument by the registrant that jurisdiction was improper, seemingly from thebelief that it was based on the deposit of the registration certificate with the court. Theregistrant argued that the registration certificate had been obtained through coercion. Thecourt held this point was irrelevant to the issue of jurisdiction, which derived from the situs ofthe registry, not the location of the deposit of the certificate.62138 F. Supp. 2d 121 (D. Mass 2001). Page 35 - 35 -The UDRP dictates which Providers are approved by ICANN to administer UDRPproceeding,63and specifies in its rules that a Complainant must agree to submit, withrespect to any challenges to a decision in the administrative proceeding, to thejurisdiction of the courts in at least one specified "Mutual Jurisdiction". MutualJurisdiction is defined in the Rules as:"a court jurisdiction at the location of either (a) theprincipal office of the Registrar […] or (b) the domainname holder's address as shown for the registration ofthe domain-name in Registrar's Whois database at thetime the complaint is submitted to the Provider."64In terms of both subject matter jurisdiction and territorial jurisdiction, Sallen v.Corinthians Licenciamentos LTDA established that it may be appropriate for a partyto challenge a UDRP decision by bringing a proceeding under the ACPA, in thatcase, in the jurisdiction of the domain name registrant (Massachusetts).65The general test in Canada for determining personal jurisdiction is to assess whetherthere is a "real and substantial connection" between the geographical forum and thesubject matter of the litigation, as considered by the Supreme Court of Canada in63Article 4(d) UDRP.64Rule 3(xiv), ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, online: (last updated: 5 February 2002).65See Sallen v. Corinthians Licenciamentos LTDA, 273 F. 3d 14 (1stCir. 2001), in connectionwith Corinthians Licenciamentos LTDA v. Sallen WIPO Case No. D2000-0461, regarding thedomain name . This case is notable for its discussion of subject matterjurisdiction of the U.S. federal courts to exercise jurisdiction in such cases. The 1stCircuitcourt held that there is federal jurisdiction over such claims, and remanded the case to thedistrict court. Page 36 - 36 -Morguard Investments Ltd. v. DeSavoye.66The Supreme Court of Canada upheldMorguard in Hunt v. T&N plc67holding the "real and substantial connection" test isconstitutionally based, and must be reflected in provincial rules concerningcompetent jurisdiction. If a court determines that it has jurisdiction over a matter,however, it may still decline jurisdiction on the grounds that the convenience of theparties and ends of justice would best be served if action were brought in anotherforum (forum non conveniens).While the location of the registrar or registry may be relevant under the ACPA or theUDRP, a Canadian decision suggests that mere location of the registrar in theforum, without something more, is insufficient for Canadian courts to assertjurisdiction over domain name cases involving infringement or passing off claimsunder the Trade Marks Act. In Easthaven Ltd. v. Nutrisystem.com, Inc.,68the courtconsidered the location of intermediaries, such as the domain name registrar, indetermining jurisdiction over parties making claims under traditional trade markstatutes. The Ontario court reasoned that there was no real and substantialconnection to Ontario, since both parties to the dispute were based outside ofCanada, and the "sole cogent connection" to Ontario was the location of the registrarof the contested domain name. There was no other evidence of the defendant'sconnection to Ontario, either by domicile, or by substantial, continuous or systematicactivities there.66Morguard Investments Ltd. v. DeSavoye, [1990] 3 S.C.R. 1077 (S.C.C.) is the key generalCanadian case in this area. Also, see J. -G. Castel, Canadian Conflict of Laws, 4thed.(Butterworths: Toronto, 1997) at 52 et seq.67[1993] 4 S.C.R. 289 (S.C.C.). Page 37 - 37 -7.0CIRA’s Dispute Resolution Policy for the .ca DomainRather than adopting the UDRP, after a lengthy consultation period, the CanadianInternet Registration Authority (“CIRA”) released its own CIRA Domain NameDispute Resolution Policy ("CDRP") on November 29, 2001, to govern disputes over.ca domain name registrations. The CDRP is expected to be implemented in early2002, although as of February 2002, no firm implementation date has yet been set,and CIRA has yet to choose a dispute resolution service provider to administer thepolicy.69The purpose of the CDRP was to reflect the maintenance of the .ca domainname as a Canadian resource, and to provide a forum in which bad faithregistrations of .ca domain name "can be dealt with quickly and inexpensively".70In 2000, CIRA released its first draft CDRP, which bore a significant resemblance toICANN's UDRP, with several important differences regarding, inter alia, the bad faithrequirement and specific provisions regarding the eligibility of complainants to fileand/or have domain names transferred to them if they did not meet CanadianPresence Requirements. CIRA solicited comments from Canadian individuals andinterest groups for feedback on the draft policy, and whether certain principles inICANN UDRP should be adopted or modified, based on the experience of the68[2001] O.J. No. 3306 (Ont. Sup. Ct.).69The CDRP is posted on CIRA's website, at (dateaccessed: 28 February 2002). Submissions made during the consultation periods are alsoavailable at the above link.70Paragraph 1.1, CIRA Domain Name Dispute Resolution Policy ("CDRP"), posted November29, 2001, online at the CIRA website: . Page 38 - 38 -URDP.71CIRA then released a revised draft CDRP on September 7, 2001, andclosed its second public consultation period on October 12, 2001.Among the issues upon which CIRA sought public comments were:i)the scope of the CDRP and whether it should include both registeredand unregistered trade marks, trade names and personal names;ii)whether complainants who do not meet the Canadian PresenceRequirements should be allowed to file a complaint under the CDRP,and/or have domain names transferred to them if successful in theproceeding (and would the .ca domain become a haven forcybersquatters if trade mark owners who failed to meet the CanadianPresence Requirement were unable to lodge complaints, and/orassume ownership of contested .ca domain names);iii)should the CDRP adopt the ICANN approach, allowing bona fide useof a domain name to be a sufficient condition for ruling against thecomplainant;iv)should the CDRP require proof of “bad faith” use and registration of thedomain name by the registrant, as it is defined under the ICANNUDRP.71See the draft CDRP, and the report by Michael Geist, CIRA Consultation on AlternativeD i s p u t e R e s o l u t i o n ( A D R ) R e p o r t a n d A n a l y s i s , online: CIRA (date accessed; 28 February 2002). Comments werereceived by the business community (including Internet service providers and domain nameservices), the intellectual property and legal communities, individual Internet users and abranch of the Ontario government (Ministry of Economic Development and Trade). Page 39 - 39 -As a result of these consultations, the final, November 29, 2001 version of the CDRPwas released. The CDRP resembles the URDP to that extent that a complainantmust allege three basic grounds: the domain name is identical or confusingly similarto the complainant's mark, the domain name registrant has no legitimate interest inthe domain name, and the registrant has acted in bad faith.72A number of important differences were introduced into the CDRP, however, mostnotably:i)in respect of the third ground of the complaint (bad faith on the part ofthe registrant), the complainant must show that the "registrantregistered the domain name in bad faith", thus eliminating therequirement under the UDRP to show both use and registration in badfaith;73ii)the CDRP specifies that a panel will consider that the registrant has alegitimate interest in the domain name, or has registered a domainname in bad faith, "if and only if" the facts of the case correspond tothe list of scenarios outlined in the policy.74iii)the CDRP recognizes provisions of, and adopts language from, theCanadian Trade-Marks Act, for example: the policy refers to Section 9prohibited marks; the definition of "use" of a mark resembles that of the72Paragraph 3.1, CDRP.73Paragraph 1.4, CDRP. Page 40 - 40 -Trade-Marks Act (from Section 4); the policy discusses how use of a"clearly descriptive" domain name would support a claim to legitimateright on the part of the respondent (the language is similar to Section12(1)(b));75andiv)the CDRP explicitly recognizes unregistered, as well as registered,trade marks;76v)if a domain registrant is successful in a proceeding, and candemonstrate to the panel that the complainant commenced theproceeding in an attempt "to unfairly, without colour of right," cancel orobtain transfer of the contested domain name(s), the panel may findthat the complainant acted in bad faith and order the complainant topay to the provider, in trust for the registrant, costs up to $5,000(Canadian dollars).In comparison, the finding that a complainant hasattempted "reverse domain name hijacking", by initiating an abusiveproceeding under the UDRP, appears to have a merely declaratorypurpose, and does not provide for monetary awards to be granted tosuccessful registrants;77and74Paragraphs 3.6 and 3.7, CDRP.75Respectively, paragraphs 3.2(d); 3.5(a) and (b); 3.6(b)CDRP.76Paragraph 3.2, CDRP.77Paragraph 4.6, CDRP. Compare to Paragraph 15(e) of the ICANN Rules for Uniform DomainName Dispute Resolution Policy. Page 41 - 41 -vi)the CDRP places restrictions on the eligibility of the complainant,requiring that to be eligible to bring a proceeding under the CDRP, acomplainant must satisfy the CIRA Canadian PresenceRequirements78at the time of submission, the only exception beingthat a foreign owner of a registered Canadian trade mark may submitcomplaints relating to the registered mark;79In comparison, it is interesting to note that as part of the 2002 opening of .us (UnitedStates ccTLD) domain name registrations to the general public,80a separate usTLDDomain Name Dispute Resolution Policy ("USDRP")81was created, rather thanadopting the UDRP. Like the CDRP, this policy also aimed to improve uponperceived difficulties with the UDRP. Most notably among the differences are thatthe USDRP specifies a requirement for the complainant to show bad faith use orregistration by the respondent (as opposed to bad faith use and registration underthe UDRP, or merely bad faith registration under the CDRP); and the USDRPeliminates the requirement to demonstrate a pattern of cybersquatting under the78Canadian Presence Requirements for Registrants: Version 1.2 Effective date: November 8,2000, posted at the CIRA website: (dateassessed: 28 February 2002).79Paragraph 1.4, CDRP.80The general public will be able to register .us domain names as of April 24, 2002. Trademark owners may register .us domain names during a sunrise period that commences March4, 2002. See NeuStar, Inc..us homepage at . See also NeuStar,Inc., News Release, ".US, America's Internet Address, Coming Soon" (12 February 2002)online:(date accessed: 28 February 2002).81NeuStar, Inc. usTLD Dispute Resolution Policy (approved by the U.S. Dept. of CommerceFebruary 21, 2002), which includes the corresponding Rules for Uniform Domain NameDispute Resolution Policy, posted online: http://www.neustar.us/policies/index.html (dateaccessed: 28 February 2002). Page 42 - 42 -claim that the respondent acted in bad faith by attempting to prevent the trade markowner from reflecting its mark in a domain name, which requirement is present in thecorresponding provisions of the UDRP and CDRP.82A finding of "reverse domainname hijacking" under the USDRP is, as the under UDRP, merely of declaratorynature, without provision for awarding costs to the successful registrant.83TheUSDRP does not appear to require that the complainant meet the usTLD NexusRequirements in order to be eligible to initiate a complaint.8482Paragraph 4(b), USDRP, and in particular, Paragraph 4(b)(ii). Compare to Paragraph 4(b)(ii),UDRP and Paragraph 3.7(b), CDRP.83See Paragraph 15(e)of the Rules for Uniform Domain Name Dispute Resolution Policyaccompanying the USDRP.84See Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policyaccompanying the USDRP: "Any person or entity may initiate an administrative proceedingby submitting a complaint […]".