Unfortunately, many not-for-profit and charitable organizations may not have the resources that the World Wildlife Fund had to protect and defend their brand or intellectual property. That is why the November 2019 announcement that the Canadian International Internet Dispute Resolution Centre () would start accepting applications for resolving domain name disputes was welcome news for not-for-profit and charitable organizations. In 1999, the Internet Corporation for Assigned Names and Numbers ( established the Uniform Domain Name Dispute Resolution Policy () and set out the legal framework for resolving domain name disputes between a domain name registrant and a third party. The CIIDRC becomes only the sixth UDRP authorized service provider that is specifically set up to .

Prior to the establishment of the CIIDRC, not-for-profit and charitable organizations were limited to protecting only their country code top-level domain (.ca) by complying with the . Now, domain name disputes that have generic top-level domain names (e.g., .com, .org, and .net) will also be resolved in Canada. Utilizing alternative dispute resolution principles, the process for complainants is reasonably straightforward. To be successful, the Complainant must prove :

• The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
• The opposing party has no rights or legitimate interests in respect of the domain name in dispute; and
• The domain name in dispute has been registered and is being used in bad faith.

Once the complainant has satisfied these three elements, the are limited to the cancellation of the registrant’s domain name, or the transfer of the registrant’s domain name registration to the complainant. For not-for-profit and charitable organizations that can demonstrate a , the establishment of the CIIDRC provides a cost-effective alternative to initiating legal action to protect their intellectual property rights concerning domain names.

Written by Patrick Gauch, a second year Master of Laws (Business Law) Candidate at Osgoode Hall Law School and a Certified Association Executive working in the not-for-profit sector.

The post Domain Name Disputes in Charitable and Not-for-profit Sector appeared first on IPOsgoode.

Background

The World Intellectual Property Organization () is a specialized UN agency focused on intellectual property. It operates an alternative dispute resolution () process for a variety of intellectual property disputes that may arise internationally, including disputes related to patents, copyrights, and trade-marks. WIPO also handles disputes related to the for the Internet Corporation for Assigned Names and Numbers (). ICANN is an American non-profit that manages IP addressing and domain name registration for the internet, essentially organizing every device and website that can be connected to over the internet. In 2011, ICANN decided to open up registration of new gTLDs. (More coverage by the IPilogue on this topic can be found , , , and .)

The Decisions So Far

For a successful LRO, the objector must prove on a balance of probabilities that the applied-for gTLD infringes an established legal right. (See the��, Module 3.5.2.) In doing so, there are two steps that need to be completed - first the objector must establish a legal right, and second the objector must demonstrate the proposed gTLD will infringe that right. Given the nature of domain names, trade-marks have been the only established rights currently used to challenge a proposed gTLD. The objections so far have been rejected for��either��failing to establish an existing right, or failing to demonstrate infringement of an established right.

Failing to Establish a Legal Right

These decisions involve a number of firms that seem to have applied for trade-mark registration for the purpose of objecting to gTLD applications, as in the case of�� - an entity that objected to an application by a wholly-owned subsidiary of Google to register ".home". ,

“The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced.”

The US Postal Service (USPS) had a�����ɳ��� of .mail, as the USPS owns a trade-mark for "U.S. Mail", but not the word "mail". Some����these early decisions ruling there was no established right as bringing clarity and predictability to the process, while strongly rejecting any��perceived��abuses of the objection system.

Failing to Establish Infringement

The more controversial rejected objections have been those where the objector had a clearly established trade-mark, but failed to show the proposed gTLD would infringe their right. A legal analyst at Bloomberg���� and����as setting two precedents that will make it difficult to launch a successful trade-mark based LRO. the panelist in��Right at Home��sets an exceedingly high burden for demonstrating infringement that would justify an objection. It is also argued that��Express LLC reinforces that the registration of a mark for a common English word is��insufficient��to block a proposed gTLD. It is possible that these decisions and their subsequent endorsement make it almost impossible for an objector with a valid established right to successfully challenge a proposed gTLD.

Going Forward

If these legal commentators are correct, it will be all but impossible for mark holders to successfully challenge gTLD registrations. As a result, any further objections will have to be filed through the pre-existing Uniform Domain Name Dispute Resolution Policy on a domain-by-domain basis, where panelists will decide if a specific URL infringes a trade-mark. Given the good track record of success by many rights holders using this process, the same commentators����this will be the true mechanism for objectors to protect their intellectual property. Even with the complete shut-out of objectors, it is still too early to completely dismiss a successful LRO, and perhaps one of the outstanding 50 will set a precedent for what a��successful��LRO looks like.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at Thompson Rivers University.

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Toronto is ground zero for these domain debates. It’s where this week the international domain regulatory body, the (ICANN) applications for new generic top-level domains (gTLDs), which are the suffixes of internet addresses.

The conflicts at play are outlined in two recent ICANN-related conference panels on new generic top-level domains (gTLDs). was hosted by the (NCUC) subgroup of ICANN in the days leading up to the conference and was hosted at the conference proper this past Sunday and featured Michele Jourdan, the Manager of New gTLD Communications for ICANN.

The good news story

The ultimate goal of the new top-level domain process is to increase choice and competition in the world of websites. To a greater extent, that is the purpose of ICANN. They have occasionally been releasing handfuls of new ones, such as .biz and .info, but this new round represents a significant increase of nearly 2000 applications for new domains.

“It’s interesting times ahead,” said Jourdan during her presentation.

The new domains will allow a wider variety of characters outside the current ones, which are largely based on the American Standard Code for Information Interchange (ASCII) computer language, which is biased toward the Latin alphabet. New domains will be available in a much broader range of character sets – for example Chinese, Arabic and Cyrillic – so that top-level endings of the domains will now match the characters used in the first part of the URLs.

Freedom of expression concerns

Freedom of domain expression is a hot-button issue. ICANN’s current process for domain applications includes a significant subjective component. After ICANN receives the application and processes it – they can at this point refuse the application based on their own, somewhat objective evaluation guidelines – the application information is posted online .

According to panelist , a professor at the Syracuse University School of Information Studies and a founder of the Internet Governance Project, there is a censoring impact of crowd-sourcing portions of the domain application approval process that can result in ��mob mentality.

“The implied standard here is, if enough people make enough noise, they can block an application for any reason. It doesn’t have to be specified. It doesn’t have to be illegal. It can simply be threatened by the fact that a lot of people don’t like it. Now to people who believe in freedom of expression, that whole standard, the community veto standard is completely problematic. It’s anti-freedom at its core.”

Protecting the public interest

In theory, the increase in the supply of domain endings should reduce the demand or for any certain or specific ones; an increase in options should reduce competition. But more domain suffixes may actually create more conflict between corporate and public interests. Rather than arguing over a single website URL, the fights will be over entire gTLD sections of the internet. The stakes with gTLDs are far higher than for individual sites within the .com or .ca pre-established gTLD.

The .patagonia tug of war is a good example. American retailer Patagonia Inc. has submitted an application for .patagonia, despite it also being the name of a region in South America straddling Argentina and Chile. Argentina’s representative to ICANN has understandably objected to the application, about a region’s rights to possession of their gTLD.

Panelist Philip Corwin, a lawyer from the , expressed anti-trust concerns about the ability of leading internet search providers and web giants like Google and Amazon to control a disproportionate amount of domain digital real estate.

In his oped for the Domain Name News, , Corwin outlines the danger of consolidating popular domain endings in the hands of a few.

“The bids by [Amazon and Google] to acquire new domain names such as ‘.book,’ ‘.shop’ and ‘.movie’ renewed fears among competitors that a powerful few will dominate the Internet marketplace of the future…If Internet users embrace the new domains, the companies that control them could bear considerable influence on Web traffic.”

Problematic governments

But corporations are not the only interest to balance. Governments can also act as roadblocks to increasing internet choice and competition. Some more restrictive governments may block certain top-level domains entirely, which can also be referred to as taking “fragmentary” or “cessation” actions.

Moreover, some governments struggle with the technical components of the international regulatory regime said panelist and ICANN board member .

“One of the big challenges is that today the processes that are in place in the intermediaries or in the platforms, the processes that are used by the governments, are usually not documented enough, transparent enough, accountable, and worst of all – or most important of all ��– they are not well interoperable.”

But countries do not necessarily lag by choice. There is an historic socio-economic, linguistic and regional dimension to internet technology development. These biases continue to manifest in ICANN and its processes, for example, as previously mentioned in terms of the lack of alphabet character diversity. Similarly, the gTLD application regions of origins are telling. , of the 1930 applications received during the last application window, only 17 were from Africa and only 24 were from Latin America. Europe and North America submitted 675 and 911 respectively.

��

What it all means

There seems to be general consensus among the digital classes that ICANN has the authority to continue and develop norms for assigning internet names and numbers. Having one established internet regime, no matter how much room there may be for improvement, is helpful to provide a single, credible forum to debate these crucial contemporary issues. The next job is increasing the diversity of voices in that forum.

There is still much to be done by way of reducing the commercial biases of ICANN and its processes, as well as creating more objective and transparent processes. To paraphrase from Professor Mueller, if ICANN is going to have a bias, then let it be for liberal democratic principles.

��

Getting involved

Those interested in promoting the public interest of domain assignment can visit the NCUC .

The Noncommercial Users Constituency (NCUC) is the home for civil society organizations and individuals in the Internet Corporation for Assigned Names and Numbers (ICANN) Generic Names Supporting Organization (GNSO). The NCUC is a Constituency within the Noncommercial Stakeholder Group (NCSG) at ICANN. With real voting power in ICANN's policy making and Board selection, it develops and supports positions that favor noncommercial communication and activity on the Internet. The NCUC is open to noncommercial organizations and individuals involved in education, community networking, public policy advocacy, development, promotion of the arts, children's welfare, religion, consumer protection, scientific research, human rights and many other areas. I agree to advocate a non-commercial public-interest position.

Denise Brunsdon is a JD/MBA candidate at Western University.

The post ICANN See Some Problems: New Domains and Freedom of XXXpression appeared first on IPOsgoode.

In 2000, the young Internet Corporation for Assigned Names and Numbers (ICANN) decided to “enlarge cyberspace” by adding new����(gTLDs) such as .biz, .museum, .pro, etc.

Such an initiative would have created new business opportunities for web entrepreneurs, simultaneously increasing ICANN’s revenues. Indeed, new internet extensions lead to profitable cyber-lands to be exploited; on the one hand by cyber-entrepreneurs and on the other hand by ICANN which earns fees from approving the creation of new TLDs, new registry operators (i.e.��the entities which manage the database of all the domain names registered in a TLD) and new registrars (i.e.��the entities that manage the reservation of Internet domain names), and charges registries and registrars fixed annual fees as well as per-transaction fees.

As soon as ICANN decided to create new “portions” of cyberspace, the ICM Registry applied for the creation of a new adult-content-dedicated internet extension: the .xxx top level domain. And here is where the story begins.

The .xxx saga: “If at first you don’t succeed, try, try, and try again!”

The first application of ICM was rejected by ICANN which argued that the adult content diffusion was not to be considered as an indispensable need for the internet community.

However, in 2004, ICM re-applied in order to create a new “”, supported by the International Foundation for Online Responsibility (IFOR) according to which ICM represented a “significant portion of the adult-entertainment community”. This application was also rejected, probably because ICANN realised that IFOR was not exactly an impartial sponsor, having been created by ICM itself in order to plead its cause.

In spite of these refusals, ICM launched an intense lobbying activity that persuaded ICANN that its application had wide support from the adult-entertainment community and, in 2005, ICANN authorised a preliminary negotiation aimed at defining the new triple-x extension. However, due to firm opposition from several governmental entities represented in ICANN’s����(GAC) – and, particularly, because of the veto posed by the US Department of Commerce – ICANN again rejected ICM’s request.

ICM decided to challenge this decision, filing an Independent Panel Review, the non-binding quasi-arbitral process offered by ICANN in order to review its decisions. Indeed, it is right and proper to recall that, although ICANN’s attributions look like public regulatory power, ICANN is not a governmental agency and, therefore, its action is not subject to judicial review. Indeed, the Independent Panel Review was created to enhance ICANN’s accountability, thus ensuring that ICANN’s activity stays within the bounds delineated by the articles and bylaws.

ICM’s final attempt proved successful. Indeed, the majority of the Independent Review Panel stated that, in light of ICANN’s 2005 positive decision with regard to the creation of the .xxx extension, ICANN could not withdraw and the .xxx gTLD should have been established.

Hence, in March 2011, ICANN approved the .xxx TLD and signed a����with ICM, according to which ICM was entitled to manage the triple-x extension for “a minimum of ten years” whilst, at this period’s expiration, the contract should have been “renewed subject to an obligation to negotiate certain terms in good faith”.

…to be continued

If ICANN and ICM thought that the consecration of their will in the .xxx registry contract would have been the last chapter of the .xxx saga, they may have committed hubris.

Indeed, in November 2011, Digital Playground Inc., an adult-movie company based in California, and Manwin Licensing International (Manwin), a porn mogul based in Luxemburg,��against ICANN and ICM, alleging various violations of Section 1 and 2 of the US Sherman Antitrust Act.

Manwin and Digital Playground argue that ICANN and ICM harmed competition in two different markets linked to the .xxx domain registry services. The first is a “defensive registration market” whilst the second is an “affirmative registration market”.

With regard to the defensive registration market, according to the plaintiffs, “owners of trademarks, owners of domain names in other TLDs and owners of other name rights [are obliged to] purchase domain names in the .xxx TLD […] to protect their names from loss of goodwill, prevent consumer confusion, or prevent association with adult entertainment”. That could indeed be considered as a form of racket on domain names operators, which are forced to defensively register .xxx addresses to protect their reputation.

At the same time, with regard to the affirmative registration market, the plaintiffs have argued that “there is a serious danger that ICM will establish and monopolize such a distinct market because of the unique association of the ‘xxx’ name with adult content”.

Furthermore, it should be noted that, despite the fact that ICANN’s Articles of Incorporation foresee that “the Corporation shall operate […] through open and transparent processes that enable competition and open entry in Internet-related markets”, no competitive procedure has been adopted to award the .xxx registry contract, nor has any been foreseen to renew the contract that will be renegotiated with ICM when it will come to its expiration.

At this point, one may ask the following question: can ICANN – which defines itself as a “private, non-profit technical coordination body” committed to “Ensuring accountability, transparency and the interests of global Internet users”[1]��– be subject to US antitrust law? Or, should it be deemed immune from antitrust law liability as a state actor[2]?

The nature of ICANN’s activity

It is right and proper to recall that, although ICANN has been designed to be a global decision-making entity operating in an independent fashion from national sovereigns, ICANN’s juridical status is that of a US private corporation, established under Californian non-profit law.

Hence, although it is charged with global regulation attributions, ICANN is subject to both California and US federal laws. To this latter extent, it has to be highlighted that ICANN may be subject to antitrust law should its activities be considered being of a commercial nature.

On August 14^th, this latter point was made explicit by the Central District of the California District Court which ruled that “the identity of a defendant as a nonprofit or charitable organization does not immunize that organization from antitrust liability”. To this extent, U.S. District Judge Philip S. Gutierrez reiterated that “ICANN granted ICM the sole authority to operate the .xxx TLD. In return, ICM agreed to pay ICANN money. This is “quintessential” commercial activity and it falls within the broad scope of the Sherman Act”[3].

Judge Gutierrez could not have been more explicit. ICANN’s activity with regard to the establishment of new internet extension is commercial. Ergo, any registry contract awarded by ICANN can be subject to US jurisdiction to adjudicate over antitrust violation.

However, it should be remarked that ICANN’s activities have a global range and there are����also out of California, i.e. in Brussels and in Sydney. Hence, one should not exclude��a priorithat antitrust lawsuits may have pertinence also on a European or Australian level.

The decision

Once the commercial nature of ICANN’s was clarified, Judge Gutierrez found that, on the one hand, “Plaintiffs have failed to adequately plead the affirmative registration market [because] an adult content website registered in the .com TLD is an adequate economic substitute for an adult content website registered in the .xxx TLD” whereas, on the other hand, they “have adequately pled a relevant market for defensive registrations […] because the only way to block a name in the .xxx TLD is to register a name in the .xxx TLD”.

Such a decision is indeed relevant in light of the impact that it may have on the recent internet-expansion programme undertaken by ICANN, which is aimed at creating����(gTLDs).

In fact, although Judge Gutierrez partly granted the motions to dismiss filed by ICM and ICANN, he allowed the plaintiffs to pursue their antitrust claims, making it clear that ICANN cannot be considered as immune from antitrust law, as ICANN argued by claiming a luck of engagement in “trade or commerce.”

Lastly, it should be noted that ICANN seems to have predicted the outcome of the Manwin affair. In fact, ICANN is carefully avoiding the same mistakes it committed during the .xxx saga and the first steps of the New-gTLD Programme seems to have been organised in order to foster the participation of all the interested bidders in a fairly competitive fashion – as long as they are able to pay the $ 185,000 entrance fee.

[1]��See: ��Affirmation of Commitments by the United States Department of Commerce and the Internet Corporation for Assigned Names and Numbers��9.1 (Sept. 30, 2009), available at http://www.icann.org/en/about/agreements/aoc/affirmation-of-commitments-30sep09-en.htm

[2]��The state- actor thesis has been developed by Michael Froomkin. See: Michael Froomkin,��Wrong Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution, 50�� DUKE�� L.J. 17, 113-124 (2000)

[3]��See��: Manwin Licensing International S.A.R.L., et al. v. ICM Registry, LLC, et al., CV 11-9514 PSG (JCGx), August 14, 2012.

The post When Porn Tycoons Meet Internet Sultans: the Triple-X Saga appeared first on IPOsgoode.

In response to the creation of a new, adult entertainment-centric domain - .XXX - many universities and trademark holders are buying up potentially pornographic versions of their web properties before they fall into irresponsible or malicious hands.

The .XXX domain names are reserved for adult-themed websites to create a red-light district on the internet, with all attendant advantages and disadvantages. The domains will be easily identified and blocked, likely seedy, and a headache for trademark holders. The spent almost $3000 on domains, such as www.KUgirls.xxx and www.KUnurses.xxx, and intends to sit on them and do nothing.

Beginning in 2000 ICM Registry LLC (a private company from Palm Beach, Florida) began to the Internet Corporation for Assigned Names and Numbers (, an international, not-for-profit organization that regulates internet domain names) proposing the creation of new Top-Level Sponsored Domain Registry - .XXX. As opposed to unsponsored domains, such as .com, sponsored domains are intended to represent a specific community, in this case, the adult entertainment industry. ICM’s proposal was repeatedly rejected by ICANN. Only after a February 2010 hearing by ICANN’s Independent Review Panel in Washington was ICM found to have met the required sponsorship criteria and on April 7, 2011 ICANN to ICM.

Intellectual property issues were among the main reasons .XXX was rejected for so long. The international nature of the internet conflicts with the regional nature of trademarks, so multiple valid trademark holders may by vying for the same domain name. ICM has a IP claims notifications procedures in place for this eventuality. Another obvious concern is brand damage via pornographic parodies.

In their FAQs, ICM that those not in the adult entertainment industry take a preventative approach and reserve their domain names, even though there are post-launch rights protection procedures in place. Of course, this conveniently aligns with their business model. The .XXX domain names go for $60 - $100 each, which is significantly more expensive than most .COM domains. For this reason, many critics view ICM’s business model as tantamount to extortion.

The sale was designed by ICM to address many of these concerns. It consisted of two “sunrise” periods, an auction and then a general sale. In the first phase, trademark holders inside the adult entertainment industry could claim .XXX versions of sites they already held the trademark for. In the second, non-adult brands could have their names removed from circulation. What followed was a “landrush” in which premium addresses that hadn’t removed themselves were auctioned off, for example: www.nike.xxx. Finally, as of December 6, 2011 everything remaining is being on a first-come-first-served basis through a variety of middlemen domain registries.

What about Canadian universities? Major Brands? All registrations are public, mildly entertaining and viewable . Both www.yorku.xxx and www.utoronto.xxx have been registered by 1764210 Ontario Inc. of Kleinburg, Ontario, perhaps as an investment in future mischief or for resale. UVic registered www.uvic.xxx. Others, such as www.ualberta.xxx and www.mcgill.xxx were reserved during the sunrise phase and are not available for registration.

At present, www.osgoodehall.xxx is currently available for purchase for the low price of $99.99 USD a year if any law students are seeking a fallback career or foothold in the adult entertainment industry.

The post DomainRush.xxx appeared first on IPOsgoode.

Domains that are considered to be profitable are retained by the registrant and those that are not considered to be profitable are deleted prior to expiry of the AGP.

In an attempt to curb abuse by domain name registrants, ICANN has taken steps to remove any potential financial incentives that would otherwise encourage the practice of domain tasting. Specifically, the initially specified that a set transaction fee (US $0.20) would be levied against domains which are deleted during the AGP. This fee will be applied where the number of deleted domains represents 10% of the net new registrations for that registrar in any particular month OR where the number of domains deleted in one month by a single registrar exceeds 50.

The AGP Limits Policy is subject to the same thresholds as the Budget Provision, but imposes a much higher cost for each deletion that occurs during the AGP. Under this policy, a minimum cost of $6.75/deletion during the AGP (cost of registering a .org domain) is applied to each transaction in an effort to stem the practice of domain tasting. Since the introduction of these transaction fees for domains deleted during the AGP, incidents of domain tasting have significantly decreased from a reported 15 million domain names in a peak month (prior to the introduction of transaction fees) to below 60 thousand per month.

From the domain taster's perspective, it is obvious why the 5-day AGP is an attractive and highly desirable option when registering domain names for the sole purpose of generating advertisement-based profits. However, the negative consequences of domain tasting can have a prolific effect on society in various ways. For example, upon attempting to re-register their chosen domain, users who accidentally allow their domains to lapse will likely encounter great difficulty in doing so, as they will likely find that it has been caught in a vicious cycle of registration and deletion by automated systems. Similarly, a lack of control on domain tasting leads to an increase in the number of websites that consist only of advertisements.

The post Domain Tasting: Clever & Strategic Business Practice or Sneaky Underhanded Manoeuvre? appeared first on IPOsgoode.

Background

The Sutherland Institute is a conservative think tank based in Utah. Their website is based at SutherlandInstitute.org. The respondent is a gay rights activist who set up a critical website at SutherlandInstitute.com. The respondent's website looks very nearly identical to the complainant's except for the background color and the text. Understandably, the Sutherland Institute was unhappy when a large donor confused the two and voiced their concern over the content on the Sutherland Institute's website. The Uniform Domain Name Dispute Resolution Policy (UDRP) requires the complainant show three things: (i) the domain is identical or confusingly similar to the complainant's mark, (ii) the respondent has no legitimate rights in the name, and (iii) the domain was registered and used in bad faith. For a much more detailed discussion of these elements, see "" on this website. Despite the confusion being generated and no defense being presented by the respondent, the arbitrator denied the Institute's request for transfer of the domain on the grounds that the complainant had not shown it was held in bad faith.

Free Speech and Domains

This dispute can be viewed as being about the limits of trademark's ability to infringe on free expression. Does the right to free speech give a person the legitimate right to use a trademark in a domain name? In copyright, fair use helps define this limit by protecting academic research, news reporting, and (in the US, anyway) parody. "Nominative fair use" of trademarks is recognized in US case law. You can use a trademark in speaking about the trademark owner subject to two conditions: you use the trademark only as necessary for your purpose and you do not imply that the trademark owner endorses your use. This was not the case here as the purpose of the respondent's website was to (initially at least) confuse visitors. Could the usage be considered a parody? The issue in UDRP cases is the domain name---the use of the mark---not the website. The mark itself is reproduced in the domain name in its entirety and in isolation.��A parody cannot be a mere copy and, as such, the panel determined that the Respondent's use��does not constitute parody.

However, despite finding no legitimate right to use the mark, the panel refused to say that the use of the domain was in bad faith---the third element the complainant must prove. The purpose of the UDRP is, primarily, to prevent the commercial exploitation of trademarks in domain names: to prevent companies from tricking users into visiting their site for monetary gain. In this case, however, the respondent was using the complainant's trademark to trick people into listening to opposing political speech. The panel could have found this to be bad faith usage but instead said this:

Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of "bad faith".

This statement can be viewed in two ways. It has been criticized as : by bringing local laws into the arbitration process they are moving away from the goal of uniformity and bringing complex choice of law issues into the mix. On the other hand, I believe it reflects the role of the UDRP. The UDRP provides an expedited arbitration process for quickly addressing the most common types of domain abuse. It was never intended to balance intellectual property rights against civil rights. The panel does not say that they are upholding the respondent's right to the domain based on the US Constitution, rather they simply say that the issue is beyond their competency. I think that that is a fair stance for them to take.

So, does free speech protect domain squatters? I guess it's an issue for the courts to decide.

The post Trademark v. Free Speech appeared first on IPOsgoode.

At a recent conference in New 91��ɫ, the Internet Corporation for Assigned Names and Numbers (ICANN) discussed the possibility of creating a centralized database (specifically referred to as an IP clearinghouse) of trademark owners. This approach would directly benefit corporations by making it an increasingly arduous process for prospective domain owners to acquire domain names that even remotely resemble the trademark of an established business. However, many corporations argue that the purpose of a centralized database is not to act as an absolute barrier to individuals who wish to register domains that contain trademarks. The idea is that a database of this sort would have the ability to preemptively highlight potential problems.

ICANN has recently come under more intense corporate pressure to adopt the IP clearinghouse approach since it has publicly declared its intention to grossly increase the number of internet domains (i.e. ".ca") to be made available to the public. As new domain suffixes are created and introduced by ICANN, corporations/trademark holders worry that they will have no choice but to pay the exorbitantly high fees associated with registering various domain names in a defensive manner. By establishing a central database, an attempt to register a variant of someone else's mark as one's own domain would be automatically blocked unless that person/corporation could prove that they offered a product or service that was legitimately connected to the chosen domain.

Trademark holders and domain owners both agreed that the current practice of using arbitration hearings to settle these types of disputes is fundamentally flawed. This process is often unnecessarily costly, time-consuming and used in an inappropriate manner.

Domain owners claim that the trademark dispute process could easily be abused by large corporations to facilitate their acquisition of highly desirable web addresses that are in no way related to their business. An of this would be Hearst's unsuccessful attempt to challenge the website of a completely unrelated entity () as an infringement of its trademark for Esquire magazine.

Balancing the interests of these two major constituents is no easy task. Therefore, ICANN must think strategically about how each party can best be accommodated prior to the implementation of a new system that has the potential to asymmetrically harm one of them beyond repair.

I can certainly understand why a corporate trademark holder would not want to make it easy for anyone else to piggyback off the hard-earned success that they have attained and communicated through their registered trademarks. However, I do believe that the protection and exclusivity granted to trademark holders must be subject to a limit. The line should be drawn where it is plainly obvious that a corporate trademark holder is using the protection and exclusivity that they have acquired for the purpose of hording and unduly restricting entry into various markets by potential competitors and non-competitors alike.

The post Trademark Holders vs. Web-Domain Owners: How Much Protection is Enough? appeared first on IPOsgoode.

A domain name is a part of the URL address typed into the web browser, and tells the visitors where the website is on the Internet. for the following Top Level Domains (TLDs) or Domain name extensions: .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel. Two common categories of TLDs include: ccTLDs and gTLDs. The former refers to "country-code" TLDs which contains two letters representing over 250 countries and external territories, such as .ca. Most TLDs with three or more characters are referred to as generic TLDs or gTLDs.

By opening this Pandora's box of gTLDs, ICANN has essentially allowed businesses and organizations to run with their creativity and to apply for any top-level domain they can possibly think of. However, there is also a filtering mechanism in place. The that this is not a market where every claimed domain name will be sold; instead, there will be a scrutinizing process to which every application, from any established entity from anywhere in the world, will be subjected. This process is meant to minimize the prevalence of offensive domain names or of those infringing on other people's intellectual property.

While some may be thrilled at the thought of expanding the Internet web to include some entertaining, ingenious and imaginative domain names, there remains . ��Aside from the guaranteed influx in domain names, which some claim will cause immense confusion and difficulty of navigation, some consumers even go as far as to claim that it would send Internet out of control. Adding to them, the problem is the issue of credibility. Since most of us have already acknowledged the fact that not all the information online is trustworthy, and that websites with .edu or .org extensions are more reliable than any random .com, it will be a major challenge to accept information from the upcoming new gTLDs. For some opportunists, this may also be a golden chance to indulge in the practice of cybersquatting. Even more importantly and from a practical point of view, we may also find it difficult to remember these new URLs.

The report of Dennis Carlton, a senior managing director from Compass Lexcon, regarding the , suggests otherwise. The paper proposes that from an economic perspective, the ICANN's proposed framework for introducing new gTLDs will . Primarily the significant competition that will result from new registrants and increased product choice will prove to be significantly beneficial for customers.

Since ICANN stands as a not-for-profit organization, and has, to this date, contributed tremendously to stabilize Internet and the domain systems, it is easy to conclude that this mass exodus from the traditional ways is not based on a materialistic motivation. By taking some preliminary measures of precaution, such as thorough application scrutiny before assigning a domain name, in-depth technical scrutiny to ensure Internet stabilization, placement of dispute resolution mechanisms to cater to trade-mark infringement allegations etc., ICANN can revive the interest, trust and participation of 1.5 billion Internet users to bask in the diversity, choice and innovation that will likely come out of this proposal.

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The involves a complaint filed by the Complainant (Globe Media International Corporation) with Resolution Canada (the Domain Name Dispute Resolution Provider) seeking to wrest the disputed domain name, "FORSALE.CA," purchased by the Registrant (Bonfire Development Inc.) on January 12, 2009. The Complainant's trade-mark application for "WWW.FOR-SALE.CA" matured to registration on January 21, 2005. In turn, the Respondent asked the Panel to make a finding of "reverse domain hijacking" pursuant to paragraph 4.6 of the CIRA Policy.

Paragraph 4.1 of the CIRA Policy delineates that the Complainant ought to prove the following on a balance of probability in order to succeed:

a)���������� The Registrant's domain name is confusingly similar to a mark in which the Complainant had rights prior to the date of registration of the domain name and continues to have such rights; and

b)���������� The Registrant has registered the domain name in bad faith;

and the Complainant must provide some evidence that:

c)������������ The Registrant has no legitimate interest in the domain name

In paragraph 18 of the , the Panel stated that even if the Complainant proves a) and b) and provides some evidence of c), the Registrant will succeed if the Registrant proves, on a balance of probability that the Registrant has a legitimate interest in the domain name.

The part a) of the test requires the Complainant to establish that the trade-mark rights precede the domain name registration date. Since the Complainant's trade-mark application matured in 2005, way before the domain name registration by the Registrant in 2009, this condition is met. For a domain name to be considered "confusingly similar," paragraph 3.4 of the Policy states that if the domain name so nearly resembles in appearance, sound or the ideas suggested by the mark as likely to be mistaken for the mark, this condition is met. Since the only difference between the trade-mark and the domain name is the hyphen, "www," and ".ca," the domain name is considered confusingly similar.

However despite the part a) of the test, the Panel concluded that the Complainant failed to establish that the Registrant registered the domain name in bad faith. This test is basically an inquiry into the subjective behaviour of the Registrant subject to some restrictions, such as the registration of the domain name for the purpose of selling, renting, licensing or otherwise transferring the Registration to the Complainant or its associates for a valuable consideration in excess of the Registrant's actual costs in registering the domain name. ��The Panel concluded that the second part of the test was not satisfied by the Complainant; and while this was sufficient to dispose of the current case in favour of the Respondent, the Panel proceeded to conclude that the Respondent had a legitimate interest in the domain name since the Complainant could not introduce sufficient evidence to the contrary.��

In response to the Respondent's claim, the Panel makes a finding of "reverse domain hijacking," pursuant to paragraph 4.6 of the Policy. At this stage, the Registrant is required to prove on the balance of probability that the complaint was commenced by the Complainant for the purpose of attempting, unfairly and without colour of right, to cancel or to obtain a transfer of any Registration which is the subject of the proceeding. While the term "without colour of right" is not defined under the Policy, the Panel indicated that the party alleging the claim should forward some evidence that the Complainant acted in "bad faith" in commencing the proceedings. The Panel also concluded that while the existence of a trade-mark registration is a relevant consideration in deciding whether the complaint was filed in good faith, a Panel must also consider other factors, including the conduct of the complainant and the nature of the domain name.

The key pieces of evidence supporting the Respondent's claim in this case included: 1) the generic nature of the domain name; 2) the evidence that the Complainant had previously tried to wrest the domain name "FORSALE.CA" from its prior owner, even before the maturation of the trade-mark application; and c) the Complainant's history of not only registering domain names such as VERSACE.CA, MENTOS.CA, ZANTAC.CA and SMIRNOFF.CA, all of which reflect famous trade-marks, but also filing the corresponding trade-mark applications for the marks WWW.VERSACE.CA, WWW.MENTOS.CA, WWW.ZANTAC.CA and SMIRNOFF, a few years after the domain name registrations. The Panel reasoned that the Complainant sought to register those trade-marks in order to legitimize the corresponding and previously registered domain name registrations, constituting a profound abuse of the trade-mark regime. Consequently, the Complainant was held to have engaged in reverse domain name hijacking.

What makes the finding of "reverse domain name hijacking" extraordinary is the potential for an award of costs of up to $5000. Judging from the fact that to date there have been no awards of costs under the Policy, the behaviour of the Complainant in this case must be an example of extreme behaviour. The practice of "reverse domain name hijacking" is too common in the industry and usually involves a big company filing a complaint against a small legitimate domain name holder, in an attempt to intimidate the latter.�� Therefore, the decision in this case is extremely significant as it not only protects those businesses that have acted in good faith to legitimately obtain domain names, but also rightly punishes those that have brought forward a "bad faith" complaint.

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