Daniel Urbas is a lawyer with Woods & Partners. His practice focuses on media law, intellectual property, e-commerce and litigation. He can be reached at durbas@woods.qc.ca

The contents of Publishing Law should not be construed as legal advice offered by Masthead or Mr. Urbas. Readers should consult their own lawyers before acting.

Column for January 2002

Resolving Internet Domain Name Disputes

In the last column, we reviewed how trademark law can affect the choice of a magazine title. We outlined some of the dos and don'ts about selecting your magazine title and protecting that title as a trademark.

This month we will look at how magazine titles compete with domain names on the Internet and what to do if someone reserves a domain name identical to your magazine's title.

Location, location, location

Success in business is often related to location: can your customers find you? In the last column, we looked at the importance of a magazine's title: how the title is often the first way to attract new consumers to sample the contents of an issue and to remind regular readers where to return. Magazines not only strive to stand out by combining distinctive names and fonts in their titles but also to distinguish their editorial content.

Finding a magazine's Web site on the Internet raises many of the same issues involved for magazines on display shelves: can your readers find you? In addition to adopting distinctive names, a magazine launching an electronic version of itself online must deal with specific technical issues created by how the Internet works.

The Internet is a collection of computers, each one identified by its own unique combination of numbers. The numbers, known as identifiers or addresses, are written in dotted decimal notations progressing from 0.0.0.0 to 255.255.255.255. The four address fields represent networks, sub-networks and local addresses. Only a single address can issue for each computer site.

To locate a computer site on the Internet, it is necessary to know the exact 12-digit address for that computer. To simplify locating a specific computer's site, the Internet designers developed a hierarchical naming scheme comprised of easy-to-remember letters and numbers. The naming scheme maps the 12 digit addresses to alphanumeric domain names. Simply put, Internet designers assigned names to the numbers. The company responsible for so doing is called ICANN or the Internet Corporation for Assigned Names and Numbers.

There are several well-known top-level domain names such as .com, .org, .net, .gov, the newly added .info and the soon-to-be-added .biz and .name. There are also top level domains divided into country codes such as .ca for Canada and .us for the United States.

The use of the domain name, with its alphanumeric substitute for the 12-digit address, is essentially concealed from users. Users type in the domain name www.mastheadonline.com into their computer's browser in order to locate a web site. The browser software, exchanging queries with a domain name system server and an Internet service provider, then locates the Web site.

The Confusion

Assigning names to numbers was intended to provide easy-to-remember names without the need to recall long strings of numbers. By using common words and phrases, domain names were originally easy to recall. The variety of possible domain names is dizzying because a complete domain name can have up to 255 letters and numbers.

Assigning names to numbers created its own problem. The registration of domain names on the .com registry was originally on a first-come, first-served basis. The immediate problem was and remains that only a single registration exists for each domain name on each domain. Some people soon realized that they could register another party's popular trademark as their own domain name and thereby attract attention to their Web site in order to have an opportunity to interest Internet users in their wares or services. Still others registered domain names and speculated on their ability to transfer the domain name for profit to the trademark owner whose trademark is either identical or very similar to the domain name they registered.

Independent of the above, another phenomena arose. Instead of merely functioning as an equivalent to a telephone number or a physical address, some domain names have come to distinguish some businesses - their wares or their services - from those of others: In short, some domain names began to function much like a trademark.

What can you do if your magazine title, which functions as a trademark, has been registered by someone else?

The Courts

Going before the courts raises serious questions about jurisdiction: whether the court has the authority over the parties or the subject matter of their dispute. For example, a Canadian court would unlikely assert jurisdiction over Company ABC located in another country simply because the non-resident Company ABC has registered a domain name identical to your magazine's title. This could be true even if Company ABC launched a magazine in its country with the same title as yours.

Litigation before the courts involves complex questions not only about jurisdiction but also whether the registration of a domain name is a trademark infringement or a passing-off. A recent court case illustrates the issue. The Ontario Court of Appeal in Pro-C Limited v. Computer City, Inc. recently dismissed an action brought by a Canadian plaintiff against a U.S. defendant for trademark infringement in Canada. (The full text of the September 11, 2001 decision is available online at here). In that case, the plaintiff had an interactive Web site at www.wingen.com which it used to sell software and to provide service. The plaintiff had registered Wingen as a trademark in Canada for use in association with computer software. The defendant established a passive Web site at www.computercity.com which it used to advertise and provide product information on its personal computers which bore Wingen labels.

The court held that the computer hardware sold by the defendant was not sold in Canada and could not be considered as computer software. The court also held that the U.S.-based defendant did not interact with customers in Canada and used its Web site only to post information, making no sales directly or in Canada. The defendant's passive Web site could not constitute use in association with wares in Canada because no transfer of ownership was possible through the Internet medium. There was therefore no use in Canada by the defendant of the plaintiff's trademark and the action for infringement was dismissed. The court held that:

"No wares competed in the marketplace and the damage, if damage there be, would have been the same if the name of the website did not have trademark protection. If a party intentionally or negligently causes injury and the ingredients for establishing a tort can be proved, then the new technology of the Internet and websites can be readily accommodated. It is much more sensible to apply tort principles to accommodate new technologies than to distort statutory trademark rights."

The court was ready to become involved if a defendant intentionally or negligently caused injury to a plaintiff using the Internet and its Web site. However, mere overlap of the names for their respective wares did not justify granting the action.

Domain Name Disputes

In order to resolve some of the most flagrant abuses in domain name disputes, ICANN has adopted a "Uniform Domain Name Dispute Resolution Policy". The policy is incorporated by reference into every registrant's registration agreement for .com, .net, .org and .biz domain names and imposes a mandatory administrative proceeding to resolve disputes over registered domain names. (The full text of the policy is available online at www.icann.org/udrp) The policy sets forth the terms and conditions applicable to a dispute between the registrant and any party, other than the domain name registrar, over the registration and use of a domain name registered by the registrant.

The policy's procedure is intended to be inexpensive and quick, relative to the costs and delays of going to court. However, all fees are paid by a complainant except in cases where the registrant elects to expand the administrative panel from one to three panellists. The policy also does not prevent either the complainant or the registrant from submitting their dispute to a court of competent jurisdiction for independent resolution before the mandatory administrative proceeding has commenced or even after such proceeding has concluded. However, the policy prevents any transfers of a domain name to a new holder during an administrative proceeding.

Some criticisms of the policy exist. For example, certain of the administrative dispute resolution services are more likely to rule in favour of a complainant than other services. This is an important fact given that it is the complainant that initially chooses the administrative dispute resolution service and not the registrant. The result is that some complainants will choose one service over another and unfairly tip the odds in their favour.

The Policy

Putting aside the criticisms with the policy, everyone who has a Web site should know the broad outlines of the policy. The key section is paragraph 4 which sets out successful grounds of complaints and defences. Paragraph 4 (a) sets out when the policy will apply:

4a. A registrant is required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) the registrant's domain name is identical or confusingly similar to a trade-mark or service mark in which the complainant has rights; and
(ii) the registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the registrant's domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of those three elements is present. For the purposes of paragraph 4(a)(iii) above, paragraph 4(b) of the policy provides that the following non-exhaustive list of circumstances, if found by the panel to be present, will be evidence that the registration and use of the domain name is in bad faith:

(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade-mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant registered the domain name in order to prevent the owner of the trade-mark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's web site or location or of a product or service on the registrant's web site or location.

In response to the complaint, the registrant can demonstrate its rights or legitimate interests to the domain name. Paragraph 4(c) of the policy provides a non-exhaustive list of circumstances which, if found by the panel to be proved, will demonstrate the registrant's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to the registrant of the dispute, the registrant's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights;
(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The parties to such a proceeding file their evidence and argument electronically and can have a decision on the merits in as little as a few weeks. The general rule is that the proceeding is based on the filed materials and there is no need or expectation for the parties to appear in person before the panel.

Conclusion

Choosing a magazine title is hard enough when launching a print magazine. Extending the magazine's reach onto the Internet is further complicated by the fact that the world is a very big place and only one entity can register a particular combination of letters and numbers as a domain name on any particular top level domain such as .com. Someone, somewhere, may have beat you to it.

For example, a print magazine's title might be "ABCDEF123". However, by the time the magazine decides to register its title online, it finds that a South American food processor has registered "ABCDEF123" on the .com registry. To make room for its electronic version, the print magazine need only add a single letter or number anywhere before, in or after "ABCDEF123" and thereby create a new domain name which will identify its web site from all others. (It can also add a dash, but not before or after the domain name, only within.) The real issue becomes whether that single addition creates a domain name which distinguishes its Web site from all others. Adding stray letters or numbers to someone else's well-known trademark will not likely protect you from a successful proceeding under the policy if not the courts.

A common solution for magazines is to add the tag "mag" or "online" to their own existing title and register the new term as a domain name with the .com or .ca registries. Doing so automatically creates a second domain name and ties in to the fact that the web site's content is related to an electronic version of the print magazine. Just be careful not to use your web site to deliver your magazine to subscribers located in a country in which a competitor offers its own magazine with an identical or confusingly similar title. If you want to actually do business in another country, see an attorney for some advice before investing money or launching the brand.