Internet jurisdiction is a very complex issue. There is a level of uncertainty at many levels. It is very difficult to apply any sort of set principles due to the ever changing technology and in an environment where there are an increasing number of cross border disputes. Business over the internet has a different dimension than the local businesses and due to that compliance with local laws is not sufficient.
To tackle this question I would like to start of by discussing the “Uniform Domain Name Dispute Resolution Policy” introduced by ICANN, which is currently in effect. This policy sets forth the terms and conditions in connection with a dispute between two parties over the registration and use of an internet registered domain name.
According to the policy there are certain requirements that have to be met and the complainant has to submit a mandatory administrative proceeding, which should prove that each of the following three elements are present.
1. The first element states that the party, against which the complaint is being filed, has a domain name which is identical or confusingly similar to a trademark or service mark in which you have rights.
2. The second point states that the defendant has no rights or legitimate interests in respect of the domain name.
3. The third element states that the defendant’s domain name has been registered and is being used in bad faith.
As we read the scenario which states that Big Blue Planet is a 2 years old restaurant which registered a domain name www.bigblueplanet.com and is located in New York. On the other hand Blue planet which is a Canadian based restaurant is 10 years old and is quite famous in Canada as it is visited by rock stars, politicians and celebrities. Blue planet has a domain which goes by the name www.blueplanet.ca. The question is whether Blue Planet can sue Big Blue Planet in Canada. Now the fact is that according to ICANN policy the three above mentioned points have to be proven to file a valid dispute. We first have to look in the matter that does Blue Planet have enough evidence to take this issue to a court. Is it a valid dispute?
According to my opinion, I think that Blue Planet does have a strong case. The reason is that it fulfills all the requirements required by ICANN. Both the domains have a very much similar name, and customers can definitely confuse both the restaurants. So if we take the first element of ICANN into consideration, Blue Planet certainly has a strong argument. When we look at the remaining two points, I think that they can also be proven. As we know that Blue Planet is a 10 years old business, which means that it has been around for a decade and of course it has a better reputation and is more famous, which is established by the sort of guests that come there to socialize. On the other hand Big Blue Planet is only a 2 years old young business. It is really not possible that the owners of Big Blue Planet did not know about Blue Planet. When ever a new venture is launched a thorough study and investigation is done before starting a business. They definitely knew that there was a restaurant named Blue Planet in Ottawa. The reason is that geographically, New York and Ottawa are not really that far away either. On top of all that, Big Blue Planet is targeting Canadian customers.
One other point I would like to bring up here is that Big Blue Planet is an active website. It would have been a different case if it was a passive website, which is a website that only uploads information and does not engage in commercial activities. This is not the case when we look at Big Blue Planet which is not just performing commercial activities among the U.S citizens but also targeting Canadian customers.
Now I would like to talk about the main issue of the question, which is that can Blue Planet sue Big Blue Planet in Canadian courts? I would like base my discussion on a recently made judgment by the Federal Court of Canada, Which really is very much similar to this issue. The case was Desjean vs. Intermix Media, Inc. regarding internet jurisdiction over a foreign defendant. The court had a very interesting way of handling the case. The court concluded that it could only have jurisdiction over foreign defendants operating websites which are accessed by Canadians if the defendant either has
1. Real and ongoing contacts to Canada.
2. Purposefully directed activities towards Canada.
The holding emphasizes the importance for website operators in the U.S. to ensure not only that they do not have operations or assets in Canada, but also that they do not target Canadian customers in any manner if they are to avoid being sued in Canadian Courts.
In the light of this judgment, Blue Planet can definitely sue Big Blue Planet in Canada just because Big Blue Planet is targeting Canadian customers. At the end I would like to mention here that the Canadian Federal Court looked into American case law for guidance as the Canadian courts are still at a very early stage of development in this field.