What is a Domain Name?
The Internet is an international network of computers. Each computer has a unique numeric address called an Internet Protocol (“IP”) address consisting of four numbers, each between 0 and 225, separated by periods.
The Domain Name System (“DNS”) is a tool that allows Internet users to locate computers on the Internet using an alphanumeric domain name instead of the more complicated numerical IP address.
A domain name pinpoints a particular site or address on the Internet. A particular domain name can lead to only one site. It is this restriction that causes tension between the DNS and the existing trade-marks law.
While different persons may be entitled to use the same trade-mark as long as that use is not confusing, only one of them (or, if the domain name is registered by a third party, none of them) will be able to use the domain name associated with that mark within a particular top-level domain (TLD). The TLD is usually either generic (such as .com or .org) or country code (such as .ca).
Tension between the Internet Domain Names and Trade-marks Law
In general, where the trade-mark and the domain name are identical, the domain name will likely be found to be similar to the trade-mark. In this case, the domain name registrant is likely to lose rights to the domain name in favor of the trade-mark owner.
In comparing a trade-mark and domain name, the question to be asked is whether the domain name is likely to be confused with the trade-mark. The appropriate test is whether the average Internet user would be confused or would mistake the domain name for the trade-mark.
The rules for deciding whether there is a conflict between a particular domain name and trade-mark come from existing trade-marks law. Generally:
1. Trade-marks may be protected via registration under the Trade-marks Act or acquire common law protection via use in association with wares and services over a period of time.
2. One trade-mark may be found similar to another where the use of both trade-marks is likely to confuse customers about the source of the wares or services.
3. Where confusion is found, the later user will likely have to stop using the trade-mark or restrict its use to non-confusing wares or services.
Applying these principles, a domain name registrant is at risk of losing its domain name if the average customer confuses the wares or services of an existing trade-mark with that of the of the domain name.
Cybersquatting
A cybersquatter is someone who acquires a domain name identical or very similar to a well known trade-mark with the intention of selling the domain name to the trade-mark owner for a significant profit. Trade-mark registration can be used as a protection against cybersquatting. Under the Trade-marks Act, an action is available against a person using a trade-mark in a manner that is likely to result in a depreciation of goodwill attached to a registered trade-mark.
Domain Name as a Trade-mark
A domain name, such as ridoutmaybee.com, can itself qualify as a trade-mark when it is used in connection with a web site that offers services to the public. On the other hand, domain names may not initially qualify for trade-mark protection. In other words, a distinctive domain name will have broader trade-mark protection than a domain name comprising of common or generic terms.
How to determine if a Trade-mark is already being used as a Domain Name
Information regarding the domain names already in use is available through online companies that have been approved to register domain names. A list of these registrars can be located at http://www.internic.net/ or at http://www.icann.org/registrars/.
