CIRA Domain Name Dispute Panel Appears to Fail to Follow its Own Rules

In a recent arbitration award involving the transference of domain names, a Domain Name Dispute Resolution Panel (Panel) established by the Canadian Internet Registration Authority (CIRA) refused to rule on the issue of bad faith, in apparent contravention of its Domain Name Dispute Resolution Policy (CDRP). Diners Club International Ltd (DCI) brought a complaint against Planet Explorer Inc. (PEI), which had registered the domain names and . PEI registered the domain names for the purpose of warning potential customers about DCI's business practices and to gather support for a class action lawsuit against DCI. The Panel ordered that the domain names be transferred to DCI. The Panel found that the domain names held by PEI were confusingly similar to DCI's registered trade-mark DINERS CLUB and with its business, which is centred on the Diners Club credit card. While the Panel acknowledged that criticism can generate a legitimate interest in a domain name, it ruled that it did not do so in this particular case. The Panel noted that in cases where protest sites have been found to have a legitimate interest, the domain name generally includes language that indicates the web site is being used for the purposes of criticism. It found that domain names which simply used the trade-mark of another do not create a legitimate interest. However, when the Panel addressed the mandatory assessment of bad faith, it stated that it made no finding on that issue, given that PEI did not have a legitimate interest in the domain names. According to the literal words of CDRP, a complainant cannot succeed in the absence of a finding of bad faith. The ruling seems to suggest that even absent a finding of bad faith, a finding of "no legitimate interest" is sufficient. For a copy of the decision (Diners Club International Ltd and Planet Explorer Inc), see: http://www.cira.ca/en/dpr-decisions/00016-award.ca.pdf. For the text of the CDRP, see: http://www.cira.ca/official-doc/CDRP_Policy_2003-12-04_en_final.html. Summary by: Colin Adams