Domain Name Disputes

Domain names are key business identifiers. By using existing trade-marks for domain names, businesses attract potential customers to their websites. Protecting these trade-marks often protects such internet uses as well.

The inexpensive, "first come, first serve" nature of the domain name registration system invites “cybersquatting” – the preemptive registration of trade-marks by third parties as domain names.

Cybersquatting leads to a crop of domain name disputes – one example being the recent dispute involving the domain name phizerviagra.com.

Pfizer Inc., owner of the registered trade-marks Pfizer™ and Viagra™, filed a complaint with Internet Corporation for Assigned Names and Numbers (“ICANN”) under the Uniform Dispute Resolution Policy (“UDRP”). Filing a complaint with ICANN is attractive. The process is quick and presents no immediate jurisdictional problems. The parties retain the option to take any dispute to a court of competent jurisdiction for independent resolution. Under the UDRP, no injunctive relief or monetary damages are available. Relief includes either a transfer or a cancellation of the domain name.

The domain name pfizerviagra.com hosted a website comprising a for-profit search portal containing pre-set links to numerous other commercial websites, including online pharmacies. Some of these linked-to sites purport to sell the Viagra™ product, and some sell Levitra™ and Cialis™, drugs that compete with Pfizer's Viagra™.

In order to be successful under the UDRP, a complainant must demonstrate the following three elements:

1. the disputed domain name is identical or confusingly similar to the trade-mark in which the complainant has rights;
2. the respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name was registered and is being used in bad faith;
4. Pfizer™ was successful in establishing the existence of the three required elements, and accordingly, the domain name was transferred to Pfizer™.

This case is interesting in many respects – the following highlights two.

First, a respondent is required to demonstrate a right or legitimate interest in the domain name. A respondent may do so by demonstrating that, prior to any notice of the dispute, the respondent used the domain name in connection with a bona fide offering of goods or services.

The panel in the pfizerviagra.com dispute said that the following uses do not constitute a bona fide offering of goods or services:

1. resellers that offer products competitive with the trade-mark owner's product;
2. domain holders that utilize the domain name to sell an extensive array of products and services that bear no relationship to the product whose mark is appropriated in the domain name; and
3. the use of the domain name to funnel web traffic in exchange for click-through and pop up advertising revenues.

Second, this case illustrates the growing recognition of famous trade-marks, and the wider ambit of protection afforded to such trade-marks (at least in cyberspace). Since famous marks, currently, are not afforded special protection under Canadian law, the UDRP is an important option.

The panel analyzed bad faith registration and use and held the following with respect to famous marks:

1. when a domain name incorporates a famous mark comprised of a coined or a fanciful term, it would be difficult, perhaps impossible, for the respondent to use the domain name of any business, product or service for which it would be commercially useful without violating the complainant's rights;
2. simply registering famous marks as domain names may, by itself in the appropriate circumstance, support a conclusion of bad faith registration and use;
3. when a domain name incorporating the famous mark is used to attract internet traffic to fuel click through and pop up advertisement revenues, or sell a competitive product, a conclusion of bad faith registration and use is unavoidable.

While legally a mark like any other, famous marks may be afforded a wider ambit of protection in the context of domain name disputes.

The pfizerviagra.com dispute is but one of numerous examples of intellectual property owners protecting their rights in cyberspace.