Criteria for selection of domain name dispute forum clarified

In Zhan v Pfizer Inc (2007 CanLII 24109 (ON SC)), the Ontario Superior Court has declined to assume jurisdiction over an action brought by a domain name registrant seeking to challenge a decision issued under the Uniform Domain Name Dispute Resolution Policy (UDRP).

The panel in the UDRP proceeding (D2006-1134) ordered the transfer of the domain name '辉瑞.com' in accordance with Paragraph 4(i) of the UDRP and Paragraph 15 of the UDRP Rules, having found that:

• Jian Zhan's domain name '辉瑞.com' was identical to the Chinese trademark registrations held by Pfizer Inc and Pfizer Products (together, Pfizer) in 辉瑞, which is the Chinese transliteration of PFIZER;
  
  
• Zhan had no right or legitimate interest in the disputed domain name; and
  
  
• Zhan registered and was using the domain name in bad faith.

Zhan commenced the Ontario action shortly after receiving notice of the UDRP panel's decision, effectively seeking a de novo review of the dispute. Pfizer responded by bringing a motion for an order dismissing or permanently staying the action for want of personal or subject matter jurisdiction or, in the alternative, setting aside service of the statement of claim and permanently staying the action on the grounds that Ontario is not a convenient forum for hearing the dispute.

So far there had been very little guidance from the courts in Canada on how to determine the proper forum for a domain name dispute. In a decision that is the first of its kind in Canada, Madam Justice Harvison Young of the Ontario Superior Court granted an order permanently staying the action on the basis of the doctrine of forum non conveniens. No finding was made on Pfizer's argument that the court had neither personal nor subject matter jurisdiction in the action.

The court found that Zhan had expressly submitted to the UDRP and the UDRP Rules in the domain name registration agreement. Pursuant to the UDRP Rules, a party initiating a complaint under the UDRP is required to agree expressly to submit, with respect to any challenges to a decision in the administrative proceeding cancelling or transferring the domain name, to the jurisdiction of the courts in at least one specified "mutual jurisdiction" as defined in the UDRP Rules. Pfizer had elected the location of the principal office of the registrar concerned - that is, the courts of the state of Colorado, located within the city and county of Denver.

The Ontario court held that the application of the UDRP and Pfizer's selection of Denver, Colorado as the mutual jurisdiction in the complaint was, in essence, a forum selection clause that ought to be given deference by Canadian courts unless there exist strong reasons not to.

Recognizing that the forum non conveniens test is a discretionary test that focuses on the particular facts of the case and circumstances of the parties, the court considered various factors relevant to its determination of the most appropriate forum for the hearing of the dispute, including:

• the location of the parties;
  
  
• Zhan's impecuniosity (he was self-represented at the hearing of the motion); and
  
  
• whether declining jurisdiction would deprive Zhan of a legitimate juridical advantage.

In the result, however, none of the factors considered provided a strong enough basis to override what was in effect a choice of jurisdiction clause previously agreed to by both parties.

Michelle Easton, Gowling Lafleur Henderson LLP, Ottawa

Gowling Lafleur Henderson LLP acted for the Pfizer Inc and Pfizer Products Inc.