What is Intellectual Property?

3. Domain Names

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 trademarks law.

While different persons may be entitled to use the same trademark 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 Trademarks Law

In general, where the trademark and the domain name are identical, the domain name will likely be found to be similar to the trademark. In this case, the domain name registrant is likely to lose rights to the domain name in favour of the trademark owner.

In comparing a trademark and domain name, the question to be asked is whether the domain name is likely to be confused with the trademark. The appropriate test is whether the average Internet user would be confused or would mistake the domain name for the trademark.

The rules for deciding whether there is a conflict between a particular domain name and trademark come from existing trademarks law. Generally:

  1. Trademarks may be protected via registration under the Trademarks Act or acquire common law protection via use in association with wares and services over a period of time.
  2. One trademark may be found similar to another where the use of both trademarks 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 trademark 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 trademark 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 trademark with the intention of selling the domain name to the trademark owner for a significant profit. Trademark registration can be used as a protection against cybersquatting. Under the Trademarks Act, an action is available against a person using a trademark in a manner that is likely to result in a depreciation of goodwill attached to a registered trademark.

Domain Name as a Trademark

A domain name, such as ridoutmaybee.com, can itself qualify as a trademark 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 trademark protection. In other words, a distinctive domain name will have broader trademark protection than a domain name comprising of common or generic terms.

How to determine if a Trademark 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/.

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