Over the past decade, Mountain View, California-based Google Inc. has filed about 65 complaints concerning its trade-mark with arbitration service providers accredited by the Internet Corporation for Assigned Names and Numbers (ICANN).
The complaints involved disputes with domain name owners over their alleged use or representation of the GOOGLE trade-mark, and the Internet search-engine giant has been successful in all but two — once in 2004, and again in 2009.
Late last year, Google lost before the National Arbitration Forum (NAF) in a complaint it brought against Oakville, Ont.-based 207 Media Inc., a small web-development and marketing company that runs the Groovle.com website. In a unanimous decision released last Christmas Eve, the three-man panel (composed of two retired U.S. judges and an American law professor) came to the same conclusion over spelling and determined that Groovle.com 'is not confusingly similar' to Google.com. At this point, Google has given no indication that it will appeal the decision.
Groovle enables users to upload photos to customize the background on Internet home pages such as Google’s. Groovle.com features a disclaimer that it 'is not owned, operated, sponsored or endorsed by Google.'
However, Google didn’t have to sue anyone, since a process of alternative dispute resolution (ADR) was available to address its complaints without requiring anyone to attend a hearing in person. Everything was done online.
'Intellectual property disputes involving the Internet — particularly those concerning domain name disputes — have been at the vanguard of ADR in cyberspace,' says Toronto-based international domain name lawyer Zak Muscovitch, who defended 207 Media against the complaint from Google and who estimates that he has been involved in hundreds of other domain name disputes using online ADR over the past decade.
'There’s no other area of law that I’m aware of that relies so heavily on ADR over the Internet than domain name disputes,' says Muscovitch, who explains that '99.99 percent' of such complaints use the online-ADR process rather than opting for litigation.
For one thing, domain name disputes usually involve parties in disparate places on the globe — say one in Moscow, another in Los Angeles — 'and going to court is in nobody’s interest because of the distances,' says Muscovitch. 'Secondly, online dispute resolution is so much more cost-efficient than regular bricks-and-mortar ADR because you cut out all the unnecessary appearances and are able to communicate entirely online.'
Muscovitch adds that the nature of the dispute usually involves people familiar with the Internet, so it naturally lends itself to resolving complaints using that medium.
Under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), a trade-mark owner can pay a fee of about US$1,500 to file a complaint against a domain name if the latter is alleged to be 'identical or confusingly similar to a trade-mark or service mark in which the complainant has rights;' if the respondent 'has no rights or legitimate interests in respect of the domain name;' and if the disputed domain name has been registered 'and is being used in bad faith.'
The complaint is then e-mailed to a dispute resolution provider (DRP) such as the NAF or the Geneva-based World Intellectual Property Forum, which handle the majority of complaints. (There are two other accredited DRPs: the Asian Domain Name Dispute Resolution Center, with offices in Beijing and Hong Kong, and the Prague-based Czech Arbitration Court. In Canada, the Canadian Internet Registration Authority, or CIRA, has accredited two DRPs for '.ca' domain name disputes. They are Toronto-based Resolution Canada Inc. and the British Columbia International Commercial Arbitration Centre in Vancouver.)
The complainant has the option of selecting either a one-member or three-member panel to review and render a decision on the complaint.
Once registration of the respondent’s domain name has been verified, the respondent is given 20 days to file a response to the complaint. The respondent can also request a three-person panel, but must pay a fee of about US$1,500 to add two panel members and get to choose one of the three (the complainant and the arbitrator get to choose one panel member each). Once the panel has reviewed the case, it renders a decision that is e-mailed to both parties.
From start to end, the process usually takes no more than 60 days. And it costs a lot less than going to court over a dispute (between $5,000 and $7,000 in Canada, when legal fees are included with the price of ICANN registration for a UDRP arbitration), according to Eric Macramalla, a partner in the Ottawa office of Gowling Lafleur Henderson LLP whose practice focuses on trade-mark and domain name litigation.
He explains that unless they’re part of a large, complex trade-mark infringement, cases of unauthorized domain name registration tend to go the route of arbitration.
'As it relates to domain names, ADR is a cost-effective and timely option for brand owners,' says Macramalla, who estimates that he acts on five complaints a month on behalf of brand owners and domain name owners.
'You need to have efficiency mechanisms in place to deal with abusive domain name registrations.'
Under the UDRP arbitration process, the test for whether a domain name may be 'confusingly similar' with another registered domain name carries a 'low threshold,' explains Macramalla, who serves as an arbitrator with CIRA. 'If a domain name looks the same, that’s confusion.'
He says the UDRP is intended to prevent cyber-squatters from registering and using domain names (which can cost as little as $8 for registration) and 'selling them to the rightful registered brand owners for profit or setting up similar domain names to capitalize on the confusion with a view to reaping some type of commercial benefit.'
But for all parties involved, the UDRP arbitration process saves money and time, requiring no in-person meetings, videoconferences, phone calls or regular mail to send written submissions (except for CIRA .ca disputes.)
That is, unless there’s an appeal of a decision — and that involves going to court.
'Whenever complainants commence a UDRP case, they expressly agree in the complaint to submit to the jurisdiction of either where the respondent’s domain name is registered or where the respondent domain owner resides in the event of a subsequent court proceeding brought by the respondent,' explains Muscovitch. 'But even though subsequent court proceedings are possible, no more than one in thousands of decisions ever goes to court.'
Though post-UDRP court cases are rare, Muscovitch has been involved with two of them, beginning with the first such one in Canada: Black v. Molson Canada [2002] O.J. No. 2820 (Ont. S.C.J.). In Black, Muscovitch successfully represented Toronto website developer Douglas Black in his challenge to a UDRP decision that favoured Molson Canada in its bid to have Black’s Canadian.biz domain name transferred to the company because it held the trade-mark for CANADIAN brand of beer.
So far, there are no plans to establish an online appeals court for UDRP decisions. But ADR-over-the-Internet could extend beyond domain name disputes, says Muscovitch.
With Google and Facebook having to deal with court cases demanding their disclosure of anonymous users, he wouldn’t be surprised if either or both web-based companies establish their own online ADR services to resolve cases of disclosure. 'It would help them avoid going to courts all over the world.'
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