Domain Names, Trade-Marks and Cybersquatting

October 15th, 2012 by Meliha Waddell

Generally speaking, the internet is the media of choice for companies advertising their goods and services. Before venturing into the realm of social media, the first step for most companies is to set up a website. To allow the public to access your website, you must first register a domain name.

Ideally, your domain name will include the name of your brand (whether your “brand” is a product that you sell, a service that you offer or the name of your company) – e.g. www.thisismybrand.ca. In an earlier blog post (http://www.devrylaw.ca/intellectual-property/trade-mark-registration/) I discussed a common misconception that incorporating a business under a specific business name grants you trade-mark rights to that name. A similar misconception exists that registration of a domain name with an internet registration authority grants you special protection or even the right to use the domain name commercially in Canada. In fact, if there is a previously registered trade-mark that is confusingly similar to your domain name, the owner of that trade-mark may force you to give up your domain name. Even an un-registered trade-mark owner can force you to give up your domain name in certain circumstances.

Registration of a domain name does give you an exclusive right to use the domain (but not the brand name itself!) for a fixed period of time, but keep in mind that you never actually own a domain name. Domain names are generally issued on a first-to-apply basis, and an annual fee is required to maintain registration. Assignment of numeric addresses to domain names (e.g. 173.194.75.104 is assigned to www.google.com) is the responsibility of the Internet Corporation for Assigned Names and Numbers (ICANN). There are over 1,000 independent registrars which are accredited by ICANN to sell domain names around the world.

One of the reasons that it is recommended to file a trade-mark to protect your domain name, is to combat “cybersquatters”. Cybersquatting, according to the US federal law known as the Anticybersquatting Consumer Protection Act, is “registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trade-mark belonging to someone else”. While Canada doesn’t have any specific “anti-cybersquatting” legislation, the Canadian Internet Registration Authority (CIRA) requires anyone registering a domain name ending with “.ca” to meet certain “Canadian Presence” requirements – these include Canadian citizenship or residency, Canadian businesses, Aboriginal Peoples and Indian Bands, Canadian trade-mark holders (whether they are themselves Canadian or foreign), Her Majesty the Queen, and foreign businesses with a physical Canadian Presence.

While Canadian presence requirements will inevitably prevent some instance of cybersquatting, trade-mark registration is ultimately the most effective way of protecting your website’s domain name. Cybersquatting is prevalent in other countries as well, and at some point it becomes a business decision as to whether you want to spend the money required to prevent someone in another country from registering a similar brand name with a different top-level domain (TLD) (e.g. .ca, .com, .net). For example, if you are not doing business in India, and have no intention of doing business in India, and have a limited budget, it may not be necessary to register the domain name www.thisismybrand.in. On the other hand it is generally recommended that in addition to registering with the .ca TLD, you also register “.com”, “.net” and “.org” at the outset to prevent those pesky cybersquatters from taking your name.

It is highly recommended that you hire an experienced professional to first conduct a search for your proposed domain name in the trade-marks database as well as a general commercial search before you begin using that name commercially. If there are no similarly confusing names in use, then a trade-mark application should be filed to protect your domain name before you register for the domain name.

If you have any questions regarding trade-mark registration or domain name registration, please do not hesitate to contact a lawyer or trade-mark agent in the Intellectual Property department at Devry Smith Frank LLP. We have been assisting our clients grow and prosper since 1964.


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