In our earlier post we wrote about the practice of domain kiting and domain tasting.  Other common tricks, such as Network Solutions’ practice of “front-running” (using customer search strings to pre-emptively register domain names before customers can get them), reflect the growing competitiveness in the domain name industry.

One more thing to watch for: a number of outfits such as AsiaDNR, or China Net Technology Limited, are sending “helpful” notices to Canadian domain name owners.  These notices appear to be from an official Asian registry and purport to notify owners that they are providing a service to protect the owner’s rights because someone else is trying to register “example.cn”, “example.hk”, “example.asia” … and ten other variations.  It’s just one more form of spam.

This practice is not new, but seems to be more common in the past six months.  It is best to ignore these notices.  I don’t know of any legitimate registrars who provide this kind of “helpful” service.  Decide whether any of the variations are of use to your business.  If you are a local Canadian operation with no plans to expand into Asia, then you may conclude that none of the Asian top-level domains will make sense for your company from a business perspective.  Even if you decide you need an Asian domain name presence, go through a legitimate registrar, such as AsiaDNS or Webnames.

Calgary – 14:01 MST

Some of the common issues facing Canadian businesses today are: ensuring compliance with e-commerce laws, handling employee surveillance issues and protecting brands online. The following links relate to online contracting and e-commerce in Alberta, as well as employee surveillance issues and online brand strategies for Canadian business:

• E-Commerce: Alberta Internet Sales Contract Regulation
• E-Commerce & Privacy: Alberta Investigation Report P2007-IR-007 – A case in which Ticketmaster contravened PIPA by requiring on-line customers to consent to the use of personal information for event provider’s marketing purposes as a condition of ticket sales transactions.
• Video Surveillance (Federal Case): Eastmond v Canadian Pacific Railway, 2004 FC 852 – in this case, the Federal Court reviewed video surveillance under federal privacy laws and articulated a four-part test.
• Video Surveillance (Provincial Case): Talisman Centre For Sport and Wellness Order P2006-008 (Alberta) – in this case, the Alberta Privacy Commissioner reviewed video surveillance under provincial privacy laws and confirms a three-part test for reviewing the appropriateness of video surveillance.
• Video Surveillance (Provincial Case): R.J. Hoffman Holdings Ltd. Investigation Report P2005-IR-004 (Alberta) – in this case, the Alberta Privacy Commissioner reviewed video surveillance in an employment context, under provincial privacy laws.
• Domain Name Decision: Neteller PLC vs Prostoprom – in this recent decision, Neteller successfully challenged the registration of a domain name under the UDRP rules, and the panel reviewed a number of common issues that were all present in this case: confusing similarity, likelihood of confusion, commercial use when using affiliate advertising programs or pay-per-click advertising, and the use of disclaimers.
• Community Trade Mark (EU): Regulations

Calgary – 20:00 MST

Alberta Premier Ed Stelmach is in good company: he joins Julia Roberts, Kevin Spacey and Mick Jagger, not to mention lesser celebrities such as one-time federal MPs Don Boudria and David McGuinty. This club can boast of the price that comes with celebrity in an internet age, since they’ve all had their personal names registered by someone else as domain names. In 2000, Julia Roberts fought and won a domain name dispute case over juliaroberts.com, paving the way for other celebrities and politicians to win back their domain names, including Mick Jagger and Kevin Spacey. In those cases, the panelists did not have trouble finding that celebrities have rights to their own names, even though the dispute resolution policy does not specifically say as much.
The dispute resolution procedure for dot-ca domain names (CDRP) is not identical to the UDRP which applies to dot-com domain name disputes. And further, a personal name has not yet been the subject of a dot-ca dispute under the CDRP. This means any attempt to run this dispute through the CDRP will break new ground.
Calgary – 23:30 MST

Rather than becoming a mature, stable industry, the domain name world is still a shifting target. The release of new top-level domains provides fertile ground for domainers and cybersquatters. Trade-mark owners and their lawyers scramble to keep up with the steady stream of developments. If the WIPO dispute resolution statistics are any measure, we’re heading into another period of intense activity, not seen since the days of the 2000 dot-com boom. In 2000 WIPO handled a record 1,857 domain name cases; that record looks like it will be surpassed this year.

On the Canadian front, CIRA is working on its revised WHOIS Privacy Policy, with implementation scheduled for March 2008.

Internationally, the following is the current list of generic top-level domains and their sponsors:

• The .aero domain is reserved for members of the air-transport industry and is sponsored by Société Internationale de Télécommunications Aéronautiques (SITA).
• The .asia domain is restricted to the Pan-Asia and Asia Pacific community and is operated by DotAsia Organisation.
• The .biz domain is restricted to businesses and is operated by NeuLevel, Inc.
• The .cat domain is reserved for the Catalan linguistic and cultural community and is sponsored by Fundació puntCat
• The .com domain is operated by VeriSign Global Registry Services.
• The .coop domain is reserved for cooperative associations and is sponsored by Dot Cooperation LLC.
• The .info domain is operated by Afilias Limited.
• The .jobs domain is reserved for human resource managers and is sponsored by Employ Media LLC.
• The .mobi domain is reserved for consumers and providers of mobile products and services and is sponsored by mTLD Top Level Domain, Ltd.
• The .museum domain is reserved for museums and is sponsored by the Museum Domain Management Association.
• The .name domain is reserved for individuals and is operated by Global Name Registry.
• The .net domain is operated by VeriSign Global Registry Services.
• The .org domain is operated by Public Interest Registry. It is intended to serve the noncommercial community, but all are eligible to register within .org.
• The .pro domain is restricted to credentialed professionals and related entities and is operated by RegistryPro.
• The .tel domain is reserved for businesses and individuals to publish their contact data and is sponsored by Telnic Ltd.
• The .travel domain is reserved for entities whose primary area of activity is in the travel industry and is sponsored by Tralliance Corporation.

The following are reserved for US government uses or international organizations:

• The .gov domain is reserved exclusively for the United States Government. It is operated by the US General Services Administration.
• The .edu domain is reserved for postsecondary institutions accredited by an agency on the U.S. Department of Education’s list of Nationally Recognized Accrediting Agencies and is registered only through Educause.
• The .mil domain is reserved exclusively for the United States Military. It is operated by the US DoD Network Information Center.
• The .int domain is used only for registering organizations established by international treaties between governments. It is operated by the IANA .int Domain Registry.

Calgary – 10:35 MST

Canadians doing business in Asia with registered marks there should not forget about the dot-asia sunrise period. In our earlier post  we refered to the general scope of the roll-out of the dot-asia domain.  The Sunrise 2a period is only open for few more days.  Generally, Sunrise Phase 2 is designed for holders of registered trademarks and/or service marks. Sunrise 2 divided into 3 sub-phases: Sunrise 2a (or “Early Bird Sunrise”), Sunrise 2b (or “General Registered Marks Sunrise”) and Sunrise 2c (for Extended Protection). Sunrise 3 allows registered “juristic entities” based in the DotAsia Community to apply for domain names corresponding to their registered name. Check the guidelines to see whether your organization fits into the definition of “juristic entity” based in Asia for these purposes. The relevant dates are:

· Sunrise 2a: from October 9, 2007 to October 30, 2007

· Sunrise 2b: from November 13, 2007 to January 15, 2008

· Sunrise 2c: from November 13, 2007 to January 15, 2008

· Sunrise 3: from November 13, 2007 to January 15, 2008

International trade-mark owners are queueing up, including Amazon, AOL, Sony Ericsson, Deutsche Telekom, the International Olympic Committee, Yahoo! and others.

More resources:

Detailed Sunrise Guidelines & FAQ (by Deloitte) 

Dot Asia Organization 

 

Calgary – 10:00 MST

In a recent decision under the CIRA Domain Name Dispute Resolution Policy (CDRP)  (McKee Homes Ltd. vs. Gerlinde Honsek , June 25, 2007), unsatisfied homeowners wanted to set up a customer complaint site directed at the contractor who built their home.   The stated intent of the site was to provide a forum for customers to detail their buying experience “from a customer point of view”. 

The domain name mckeehomes.ca was identical to the contractor’s trade mark MCKEE HOMES and the contractor launched a complaint under the CDRP.  The arbitration panel found that the registrant lacked legitimate interests in the domain name despite the stipulation in the CDRP that legitimate interests can be established if the use is for criticism. 

The panel decided that “The Registrant can achieve her objective of criticism by adopting a domain name that is not identical to Complainant’s mark, or that does not otherwise suggest some type of connection with the Complainant.”  The whole point of a criticism or complaint site is that it does suggest some type of connection to the subject matter of the critique.  How close can a domain name be to the trade-mark and still be able to take advantage of the “criticism” exception in the CDRP?  That is left to future decisions.  

 

Calgary –  10:30 MST

One year ago, the dot-eu domain was launched.  Now, more than 2.5 million registrations later, it is worth reviewing this European-level domain.  For Canadian businesses the dot-eu domain is available where they meet the test for eligibility:  registrants must be a company having its registered office or principal place of business within the EU, or an organisation established within the EU, or an individual resident in the EU. 

With any top-level domain, there are hundreds of disputes and in this case they are managed by the Czech Arbitration Court .

One recent dispute involved a complaint by the owners of the famous ESPRIT trade-mark over the registration of the domain name esprit.eu. The Arbitration Decision ordered the domain name to be transferred back to ESPRIT, even though the word is a generic dictionary word (it means “spirit” in French). The trade-mark owner was able to establish the required elements that the domain name was identical to the Complainant’s mark, and the registrant lacked legitimate interests in the domain name. Having established a lack of legitimate interests, the “bad faith” element was not required under the dot-eu regulations.

 

Calgary – 19:40 MST

In a decision released last week, the domain name yellowpage.ca walked away from a challenge mounted by the Yellow Pages Group Co.

In Yellow Pages Group Co. v. Coolfred Co.  (March 13, 2007), the three-member panel reviewed a complaint by the owners of the famous YELLOW PAGES family of trade-marks.  In its complaint, the trade-mark owner alleged that an Ontario registrant registered the domain name yellowpage.ca in violation of the dispute resolution policy.  To succeed, the complainant had to establish three things:

• that the domain name is identical or confusingly similar to the complainant’s trade-mark;
• that the registrant has no legitimate interest in the disputed domain name; and
• that the domain name was registered in “bad faith”.

The trade-mark owner was able to meet the first two tests but failed on the third. Despite creative arguments to paint the registrant as a career cybersquatter, the complainant failed to convince the panel that the domain name was registered in bad faith.  The complaint was dismissed and the registrant held on to the domain name. 

One other point is worth noting: Under paragraph 4.6 of the CDRP, a $5,000 penalty may be imposed on unsuccessful complainants who are engaged in reverse hijacking of domain names.  In this case, the registrant countered with its own claim that Yellow Pages Group should be obliged to pay out the $5,000 to defray the registrant’s costs.  Such a counter-claim can only succeed where the complainant mounted its challenge “unfairly and without colour of right”.  The panel correctly denied this relief, but it serves as a useful reminder of the potential costs of failed complaints.

Calgary – 12:35 MST

 

 

CIRA will release the next batch of gently used .CA domain names on January 10, 2007.  There are about 2100 names on the list, including a number of trade-marks (for example, MGMStudio.ca, Nokiaringtones.ca and xboxnews.ca), a number of typosquatting domain names (wwfutureshop.ca, wwmsn.ca, wwshaw.ca, wwticketmaster.ca and wwwalmart.ca) and about 130 domain names which double as downtown Vancouver street addresses. 

Calgary – 10:52 MST

Internet Trends

User-generated content (not only from blogs and YouTube, but also from Reuters and the BBC) is on the rise. 

As users continue to mash-up their own content with content borrowed from elsewhere, the intellectual property fur will continue to fly.  Expect copyright battles, trade-mark skirmishes and technological protection measures to make headlines as ordinary citizens test the boundaries of  “user-rights” vs. copyright.

Trade-marks 

There are not too many areas of the economy where branding and corporate identity are not a critical issue.  The Supreme Court of Canada weighed in on two significant trade-mark cases in 2006: the court reviewed “famous marks” in the Barbie case (Mattel Inc. v. 3894207 Canada Inc), and in the case of Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltee.  Trade-marks will continue to overlap with internet law and inter-jurisdictional issues, as we have seen in cross-border disputes such as the Pro-Swing vs. Elta case.

Domain Names 

Trade-mark owners can’t rest as domain name battles become a full-time occupation.  Some developments are helpful: WIPO issued its Overview of Panel Views which serves as a useful guide for those engaged in UDRP disputes.  Other developments are less encouraging: consider how the click-through ad-revenue system favours cybersquatters who can turn a quick profit from domain names which capitalize on the reputation of brand owners.  Microsoft’s battle with these cybersquatters will be interesting to watch as the law continues to play catch-up with technology.

 

Thanks to all of our readers in 2006.  We will continue posting in 2007.

Calgary - 09:25 MST

In August 2006, Microsoft launched a series of lawsuits in the U.S. against alleged cybersquatters.  This in itself is not necessarily newsworthy, considering the number of battles Microsoft and other famous trade-mark owners have to fight on an ongoing basis to protect their trade-marks online.  In this case however, the sheer volume of registrations was noteworthy. The cybersquatters had registered hundreds of domain names which were variations and common misspellings of Microsoft’s trade-marks, such as microsoftnewssource.com, msninfoonline.com, freewindowslive.com and msnblog.com. 

This brand of cybersquatting might be called “next generation” since it doesn’t rely on the traditional method for profiteering.  Instead of making money by selling the infringing domain name back to the rightful owner, or to a competitor, the domains have value because of their ability to generate per-click ad revenue.  The infrining domains are parked at a generic page which lists ads, all of which will generate revenue when misdirected visitors click through in the search for the legitimate site or page they were looking for.  Multiply this by hundreds of domain names and bingo, you’ve got yourself a profitable side-line, all based on ad-revenue. 

The ad-driven frenzy is reflected in “domain kiting“.  Domain kiting or domain tasting is the practice of registering a domain name speculatively and testing the ability of that domain name to generate traffic (and ad revenue) during an initial registration period.  Most registrars offer a refund if a domain registration is cancelled during this initial period.  Cybersquatters are using this period to register thousands of domain names, test drive them, and return them if the profitability potential doesn’t justify the registration cost. 

Microsoft, like other trade-mark owners, is using all legal means available in the battle against online trade-mark infringement, including UDRP complaints, and lawsuits based on trade-mark infringement and the US Anti-Cybersquatting Consumer Protection Act .  In Canada, there is no corresponding statute, so trade-mark owners must decide between the Trade-marks Act and the CDRP .  Microsoft lost one battle under the CDRP involving a .CA domain name. The domain name msnsearch.ca was registered by Canadian company Microscience Corp.  Microsoft alleged the domain name was confusingly similar to its MSN family of trade-marks.  Microscience fought back.  In the decision the panel agreed that there was confusing similarity, Microsoft lost on the grounds that there was no “bad faith” on the part of Microscience since it was not a competitor of Microsoft and the registration did not prevent Microsoft from registering its own trade-marks as a domain name.

The lessons?  Cybersquatters move fast and trade-mark owners have to educate themselves on the legal tools available to play hardball in these domain name games.  The tools include arbitration under the applicable dispute resolution policy, and litigation using trade-mark laws in the country having jursidiction over the infringer. 

Calgary – 13:02 MST

There is a very interesting dispute developing in the case of  e360Insight, LLC et al. v. The Spamhaus Project, Case No. 06 CV 3958, in the United States District Court, Northern District of Illinois. 

Spamhaus is a UK-based organization that “blacklists” spammers in a database designed to filter out spam.  The lawsuit started as a complaint by e360 that their company shouldn’t be included in the blacklist.  Spamhaus took the position that, as a UK-based organization, they weren’t subject to the jurisdiction of the US court.  e360 obtained default judgement and an injunction against Spamhaus. Spamhaus has upped the ante by proposing a court order that ICANN should efffectively suspend the domain name of Spamhaus.  ICANN (properly) responded that it “cannot comply with any order requiring it to suspend Spamhaus.org or any specific domain name because ICANN does not have either the ability or the authority to do so.” [link] This brings in the Canadian connection: the registrar of the spamhaus.org domain name is Tucows Inc., a Canadian company.  Registrars do have the authority to deregister domain names (for example, a domain name which is the subject of a transfer order under a UDRP decision). As far as I can see, Tucows hasn’t commented yet.  This poses a classic law-school exam question on internet law: can a US company obtain an order in a US court over a Canadian registrar to enforce its judgement against a UK organization?  We will revisit this story in future posts.

 

Battles for internet real estate are often fought in the domain name arena.  This is a hybrid world full of acronyms (UDRP, CDRP, CIRA, ICANN…) which was created just for the resolution of domain name ownership disputes. Who is entitled to own a domain name and what mechanism is used to resolve such a dispute? To answer this question, the domain name dispute resolution system was created.  In Canada, disputes over .CA domain names are governed by the CIRA Domain Name Dispute Resolution Policy, which is commonly referred to as the CDRP. 

In October 2006, the CDRP decision in Wrigley Canada Inc. v. Brain Wave Holdings Inc. was released. Remember, this is not a court decision.  This is an arbitration process unique to domain names which operates outside the Canadian court system.  This dispute involved the domain name candystand.ca.  Specifically, Wrigley, the candy king, alleged that the domain name was registered by Brain Wave Holdings in “bad faith” and should be transferred to Wrigley.

Brain Wave Holdings, a Kelowna, B.C. company, registered the domain name in July 2002.  The registrant used the site as a kind of portal to other candy-related sites or links. 

Wrigley alleged that the registrant registered the domain name in “bad faith” to prevent Wrigley from obtaining the domain name, and that the registrant lacked legitimate interests in the domain name.  Wrigley pointed to its own site at www.candystand.com and its US registered trade-mark CANDYSTAND.  Wrigley did not have a Canadian trade-mark registration and so had to rely on its unregistered or common-law rights to the mark CANDYSTAND in Canada for the purposes of this dispute. 

Brain Wave Holdings countered, saying that the word CANDYSTAND is descriptive or generic and that no-one should be entitled to a monopoly on such a descriptive term. This seems like a good argument to me, and given the use of the domain name by the registrant as a portal to candy-related sites, it might appear that the registrant was making a legitimate use of the domain name.  It would be like using the domain name breadbox.ca as a portal to bread-related products. Who could claim rights to such a generic term?

Wrigley could. And did, successfully in this case.  By submitting evidence of the strength of their mark and the popularity of their candystand.com site (4 million visitors a month) they showed that it was unlikely that the registrant was unaware of Wrigley’s rights at the time the name was registered.  They clinched the case when they showed that this registrant had a prior history as a cybersquatter.  Instead of an innocent mom-and-pop candy-store operator in Kelowna, they painted the registrant as a notorious cybersquatter who must be up to no good.  These factors convinced the arbitration panel that the domain name should be transferred to Wrigley. 

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Calgary – 08:58 MST – The Canadian Internet Registration Authority [link], the organization that operates Canada’s .CA registry, releases “gently used” domain names from time to time. These are typically registrations that have expired and their original owners don’t have the interest or inclination to renew them.  The domain names (there are 1361 being released this time around) are released back to the pool to be picked up by the next enterprising registrant. To view the current list, click here.