Domain Names at the Intersection of Free Speech and Trade-Mark Law on the Internet

Article excerpt

This article discusses the intersection of trade-mark law and the freedom of speech in the context of Internet domain names. A domain name is a more easily identifiable reference for a long numerical Internet Protocol address (which is used to identify a particular website). The relevance of a domain name in the context of free speech arises where someone chooses a domain name which comprises the trade-mark or trade name of another for a website which criticizes or otherwise comments on the owner of the trade-mark or trade name. The most frequently encountered examples of such activity are cybergriping, the identification of a website by the domain name of the type , and cybercriticizing, the identification of a website by the domain name , where, in each case, the website operator has no permission to use the trade-mark or trade name and criticizes the trade-mark or trade name owner. A more recent development is the use of such a domain name to identify a blog site. The issue is whether one can adopt such a domain name for a website that criticizes the owner of the trade-mark or trade name without violating rights in the trade-mark or trade name comprised within the domain name.

The article considers decisions of United States courts as well as those in Canada. The article also considers relevant decisions under the World Intellectual Property Organization's Uniform Dispute Resolution Policy (UDRP) and the approach likely to be adopted under the Canadian Internet Registration Authority's CIRA Dispute Resolution Policy (CDRP) for .ca domain names. (1)

1. FREEDOM OF EXPRESSION

The constitutions of both Canada and the United States expressly provide for the freedom of expression.

(A) Canada

The Canadian Charter of Rights and Freedoms provides that everyone has the "freedom of thought, belief, opinion and expression, including freedom of the press and other media of communication". (2) The Charter only applies to government action and does not apply to private litigation completely divorced from any connection with government. (3) Private litigants may only invoke the Charter to attack legislation on the basis that the legislation relied on is contrary to the freedom of expression. However, where legislation or the common law creates private commercial rights, these rights must be interpreted consistently with charter values, including the right of freedom of expression. (4)

The Supreme Court of Canada has broadly interpreted the Charter's freedom of expression provisions. Freedom of expression protects any activity that conveys a meaning and includes the right to send and receive that information. (5) The provision extends protection to all types of content and to its many different forms of expression. (6) Commercial expression is protected and has substantial value and social importance. Freedom of expression protects the right to express dissatisfaction with commercial enterprises, including counter-advertising, provided the expression is not defamatory. Consumers may express frustration or disappointment with goods or services and may share their concerns with other consumers and try to warn them against the practices of a business. (7)

However, the Charter recognizes that values conflict and that the government must place some limits on fundamental rights. (8) The extent to which commercial expression is protected depends on: (i) the purpose of the legislation restricting the expression and whether it is pressing and substantial; (ii) the extent to which it is rationally connected to achieving its objective; (iii) whether it minimally impairs commercial expression; and (iv) whether the deleterious effects of the restriction outweigh the benefits. (9) It is more difficult to justify infringing expression that is not related to the core values of the Charter right, including truth, participation in the political process and individual self-fulfillment. …