Trademarks play an important role in any IP portfolio and can require a significant investment to develop, maintain and protect. Trademarks containing words, such as a company name or product line, are commonly used as part of a domain name to direct customers to a relevant website. However, unlike trademarks, domain names can be registered in real time, without examination of the registrant's right to register the domain. This means that it is only after the fact that a company will become aware that someone has registered a domain containing one of its trademarks. Canada's country code extension is dot-ca. The following discusses the options available if someone has registered YourTrademark.ca, or a confusingly similar domain.
Step 1 – Know your enemy. The dot-ca registry is controlled by the Canadian Internet Registration Authority ("CIRA"), which has established various policies and procedures governing all dot-ca domains. One such requirement is for registrants to provide contact information, known as WHOIS information, which includes an e-mail and a physical address. WHOIS information in the dot-ca registry is public for corporate registrants, but private for individual registrants. However, in the case of a dispute, CIRA has developed a procedure to notify an individual registrant of the dispute, and to disclose the WHOIS information to the complaining party after 14 days if the matter is not resolved. Establishing the identity of the registrant may clarify the motives behind the registration, allow for further investigation and facilitate communication.
Step 2 – Assess the infringement. There are several levels of possible infringement, which will dictate what kind of response is justified. The first step is to assess the similarity of the domain to your trademark. It may be an exact match, contain the trademark plus additional matter, or be a misspelling of the trademark. The closer the domain is to your trademark, the more likely customers will be inadvertently directed to the domain, and the greater the potential problem. The second step is to consider how the domain is being used. The following five categories cover most situations.
- Counterfeit – The domain is used to host a counterfeit website purporting to be your business. This is a serious problem and must be dealt with immediately.
- Direct competition – The domain is used to host a website of a direct competitor. This is also a serious problem and must be addressed.
- Traffic stealing – The domain is used to host a website or a holding page that does not compete directly, but may provide links to competitors. Its primary purpose is to generate income by capturing traffic intended for your website. This may or may not be a significant problem depending on how much traffic is being redirected.
- Under construction – The domain does not resolve to any website. This is not an immediate problem, but has the potential to develop into infringing use. Identifying the registrant may clarify the seriousness of the risk.
- Non-infringing use – The domain is used by an entity with a legitimate interest in the domain, such as a business with the same name operating in a different field. This may still result in lost traffic and disrupt your business, but the remedies may be limited.
Step 3 – Consider your remedies. Once the level of infringement has been assessed, it is time to choose a course of action. The most simple and low cost action is generally direct negotiation with the registrant. If there is infringement, this will usually take the form of a cease & desist letter to the registrant demanding transfer of the domain, and may include an offer to purchase the domain for a nominal amount. If the registrant has a legitimate interest in the domain, contact may only involve an offer to purchase the domain. If unsuccessful, there are two primary legal remedies available, namely arbitration or litigation.
The CIRA Domain Name Dispute Resolution Policy ("CDRP") provides for a relatively quick out of court arbitration process to recover domains registered in bad faith. In order to succeed in a CDRP proceeding, the complainant must show that: 1) it has rights in a trademark that is the same as, or confusingly similar to, the domain and that the rights pre-date the registration of the domain; 2) the registrant has no legitimate interest in the domain; and 3) the domain was registered in bad faith. The CDRP sets out an exhaustive list of grounds that will satisfy the second and third requirements. A CDRP proceeding is typically resolved within 90 days.
If arbitration is unsuccessful or if the complainant cannot meet the three-part test, litigation may be appropriate. A legal action typically takes longer and is more expensive than a CDRP proceeding, but can provide a greater range of remedies. In a CDRP proceeding, the only remedy is transfer or cancellation of the domain, whereas a legal proceeding can provide additional remedies, such as an injunction for trademark or copyright infringement, damages, delivery up of infringing goods and court costs.
In addition to the above, certain technical attacks are possible if the registrant does not meet the Canadian presence requirements established by CIRA to register a dot-ca domain or has incomplete or inaccurate WHOIS information. Bringing these issues to CIRA's attention may result in cancellation of the domain if the registrant does not correct the problem.
If it is deemed appropriate not to take any action, the expiry date of the domain registration should be noted and monitored as there may be an opportunity to acquire the domain if it is not renewed.
Step 4 – Prevention. There are two key aspects to preventing the registration of infringing domains. The first aspect is to obtain defensive registrations of domains that are currently available, effectively taking those domains off the market. The main drawback of this strategy is the cost and administrative burden associated with holding a portfolio of defensive registrations, especially in view of the large number of possibly relevant domains. In this regard, there may be several relevant domain name extensions to register — there are currently over a dozen generic extensions (e.g. dot-com, dot-biz, dot-org) and over two hundred country code extensions (e.g. dot-ca, dot-us, dot-cn), with potentially hundreds more extensions to be approved in the coming years. Further, a defensive registration portfolio will include not just exact trademarks, but alternatives and misspellings. For example, the fictional shoe company WRECKERS, might register wreckers.ca, wrekers.ca, wreckerscanada.ca, wreckersshoes.ca, etc.
The second aspect of prevention is to obtain trademark registrations for important marks. A trademark registration provides advantages in both a CDRP proceeding and a legal proceeding as compared to common law rights. A trademark will also act as a deterrent to legitimate businesses seeking to establish their own trademarks and domain names.