A well‑chosen domain name is a valuable brand asset. It serves as a powerful marketing tool by helping businesses stand out in a crowded digital landscape and attracting consumers to their websites. When a domain name incorporates a familiar, reputable brand owner’s trademark, it immediately conveys credibility and assures consumers that they have reached the correct site and can expect a trusted level of quality and reliability that they associate with the brand.
New or unclaimed domain names, however, can be easily registered by a member of the public, even when the domain includes an existing trademark. There is generally no centralized authority or regulatory body that screens domain name registrations for third‑party trademark rights (aside from limited mechanisms such as sunrise periods for newly launched top‑level domains).
So, what happens when a trademark is used in a domain name to divert traffic to a competing website, exploit goodwill, cybersquat for payment or enable fraud or public harm? If left unaddressed, the result is often consumer confusion and reputational damage as online users may mistakenly assume an affiliation with the trademark owner.
Fortunately, trademark owners have several options to address the unauthorized use of their trademarks in domain names. These options are discussed below.
Registrar or host assistance
Under certain circumstances, a domain name registrar may assist a trademark owner by suspending a domain name registration that incorporates an unauthorized trademark, and a website host may assist by withdrawing its hosting services, resulting in the website being taken down.
Registrars and hosts have policies that set out terms of use that prohibit a range of activities, such as fraud, phishing, impersonation or other abusive or unlawful conduct. When a clear violation is brought to the registrar or host’s attention, the registrar has authority to suspend the domain, and the host has the authority to withdraw services, though neither is required to act.
As a first line of attack, trademark owners can bring egregious violations to the registrar or host’s attention and request immediate intervention. In turn, the registrar may suspend the domain (meaning it can’t be used to host any website or send or receive any e-mails), and a host may withdraw services (meaning the website will no longer function). Although contacting the registrar or host does not guarantee the suspension of the domain name or the take down of the website, when successful, it provides a swift and relatively low-cost resolution to the matter.
Private negotiation
Another option available to trademark owners to stop the use of an infringing domain name is directly communicating with the domain name owner. Such communications can consist of a cease-and-desist letter (which is more appropriate for associated websites displaying problematic content), a request for transfer, or other resolution. In certain cases, such as when the owner has some right to the domain such that recovery through other means may be challenging, an offer to purchase the domain may be appropriate.
Engaging with the domain name owner at the outset may facilitate an early resolution. The registrant may agree to transfer the domain and cease the infringing use.
Even where such direct communications do not resolve the dispute, it can still assist the trademark owner as part of a long-term strategy. If the registrant does not respond, responds evasively or requests an unreasonable sum for the transfer of the domain, these activities can support an allegation that the domain was registered in bad faith in domain name dispute resolution proceedings.
Where private resolution is unsuccessful or not appropriate, another potential solution is domain name dispute resolution.
Domain name dispute resolution
All domain names are subject to dispute resolution policies that allow for a streamlined and efficient arbitration process through which the domain name registration may be transferred to a trademark owner, provided certain criteria are met.
Generic top-level domains (e.g., .com, .net, .org, etc.) are subject to the Uniform Domain Name Dispute Resolution Policy (UDRP). Country-code top level domains are generally governed by alternate, comparable policies set by their respective registries, while some registries adopted the UDRP or variants thereof. The .ca country-code top level domain, for example, is subject to the CIRA Domain Name Dispute Resolution Policy (CDRP).
Domain name arbitration cases may be filed with approved service providers that have been authorized by ICANN or national registration authorities.
While the policies behind UDRP and CDRP proceedings differ in some important respects, the three central criteria to be established are the same. Both policies require the complainant to establish:
- that it has rights in a trademark, and the disputed domain name is identical to, or confusingly similar to, that trademark. The trademark rights can be either registered or unregistered;
- that the registrant does not have rights or legitimate interests in the disputed domain name (a legitimate interest might include if the domain corresponds to the domain registrant’s own mark or name, or is a generic, descriptive or geographical term); and
- that the disputed domain name was registered in bad faith (under the CDRP) or registered and used in bad faith (under the UDRP).
Additionally, to file a CDRP complaint, the complainant must satisfy CIRA’s Canadian Presence Requirements. This includes being a Canadian citizen or corporation, holding a valid Canadian trademark registration corresponding to the disputed domain name or otherwise meeting one of the categories under CIRA’s Canadian Presence Requirements. The complainant must also establish trademark rights in Canada that pre-date the domain name registration.
Pursuing domain name dispute resolution proceedings offers several advantages compared to court proceedings:
- Domain name arbitration proceedings are significantly faster and governed by strict timelines, typically concluding within a few months. By contrast, court proceedings can take much longer to resolve because they involve more steps and are more complex.
- Domain name dispute resolution proceedings are streamlined. They are commenced with a complaint and response, after which an appointed panel renders a decision on the written record. By contrast, court proceedings involve formal pleadings and are subject to significantly more stringent procedural and evidentiary requirements.
- Domain name dispute resolution proceedings are much less costly than court proceedings.
Court proceedings
Initiating court proceedings may be necessary where private resolution or domain name dispute resolution mechanisms are unavailable or unsuccessful. In Canada, this may be the case for foreign trademark owners who do not satisfy the Canadian Presence Requirements.
Court proceedings also provide relief falling outside the scope of domain name dispute resolution. While dispute resolution proceedings are generally limited to the transfer or cancellation of specific domain names, they do not address the risk of ongoing or future infringement involving a particular trademark. By contrast, courts may grant injunctive relief to prevent an infringer from continuing its infringement and prevent future infringement, transfer the domain name, and award damages or an accounting of profits.
Under the Trademarks Act, trademark owners may rely on causes of action such as trademark infringement, passing off and depreciation of goodwill to address a third party’s use of their trademark in a domain name.
That said, court proceedings can be costly, time-consuming and are subject to strict procedural and evidentiary requirements. Furthermore, a trademark owner must establish the elements of trademark infringement, passing off or depreciation of goodwill, each of which can be onerous to prove. For example, both passing off and depreciation of goodwill require a plaintiff to demonstrate a sufficient reputation in the trademark at issue.
As a result, court proceedings are typically considered once private resolution, engagement with the registrar, or domain name dispute resolution mechanisms have been unsuccessful or are unavailable.
Conclusion
Trademark owners have a range of options to address unauthorized use of their trademarks in domain names from registrar or host intervention, private negotiation, expeditious arbitration proceedings and where necessary, formal court proceedings. Choosing the appropriate enforcement mechanism depends on the specific circumstances of the dispute, including the nature of the infringement, the remedies sought and the trademark owner’s strategic objectives.
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The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.