Internet Domain Names: Trademarks are critical!

Internet Domain Names: Trademarks are critical!

Welcome to the Plaskacz and Associates ‘LEGAL SOLUTIONS TO SOFTWARE ISSUES’ newsletter. This is a free information service provided by the law firm of Plaskacz and Associates. IT IS DESIGNED TO PROVIDE INFORMATION OF A GENERAL NATURE ONLY AND IS NOT INTENDED TO REPLACE SPECIFIC LEGAL ADVICE. Q2 2003

What are Domain Names?

Domain names are unique numeric Internet Protocol addresses (such as 206.191.60.210) that have been made easy to understand by using letters to match the numeric code (e.g. “plaskacz.com”). It is these letters that are referred to as “domain names.” Since no two internet sites can have the same name, it is the registration of these domain names that is the subject of much controversy.

Why are Domain Names important?

When a client, or potential client, is searching for a company’s web site, their first attempt will likely be to guess at the domain name (e.g. “www.corel.com”). If the client gets an error message or, worse still, someone else’s site using what they thought was the name of a specific business, they may get frustrated and have to resort to slow, tiresome search engines. Since no one wants unhappy clients, a business is well served by having an easily accessible web site. Furthermore, marketing a product is facilitated by simple internet identifiers and, like any other trademark or trade name, can be a source of recognition in the marketplace (e.g. http://www.ibm.com).

Who regulates the use of Domain Names?

InterNIC (a USA company) is in charge of registering subdomain names in most top level domains (including .com, .org, .gov, .edu and .net. as well as the more recent .firm, .shop, .web, .arts, .rec and .info). Usually, this registration is done on a first-come, first-served basis, however, this has led to problems such as registrants holding domain names for “ransom” (e.g. registering a common name like “MTV” and then selling it to Music Television). Relief may be available for a small number of “famous” trademarks (e.g. McDonalds) but also for the less famous by proving a prior right through a registered trademark. Therefore, the best course of action is to register one’s trademark as a domain name even if the organization has not yet decided to establish an internet presence. If an organization uses a domain name within the .ca domain (Canada), registration is done through CIRA.

Can a Domain Name Become a Trademark?
How does it meet the use requirement?

Generally speaking, mere advertisement of services (but not goods) using a registered trademark is enough to constitute “use” of the trademark for the purposes of s.4 of the Trade-marks Act (Canada). This said, it is easy to establish use of a domain name as a trademark if it is associated with services because the name need only be used for advertisement. Unfortunately, domain names corresponding with tangible goods not delivered through the internet (e.g. Hardware as opposed to software) are more difficult to “use” under s.4. However, if a trademark appears on a contract conducted on the Internet, and if the contract operates so as to effect transfer of the title to the goods, it may be considered used.

Which part of the Domain Name could be considered a trademark?

In Canada it has been informally stated that the part of a domain name that constitutes a trademark is the mark as a whole (however, the “http” portion etc. has no trademark significance). This means that, theoretically, extensions including top-level domain names can be part of a registered Trademark. The U.S. Patent and Trademark Office has a formal policy statement dealing with the proper classification of Internet related services. They indicate that the “top-level” domain name portion has no trademark significance for registration purposes. However, use (in the trademark sense) of the “name” part of a domain name may result in a common law advantage when attempting to register the name as a trademark.

Generally, a name used merely as an Internet address is insufficient to constitute use under the Trade-marks Act. However, a domain name used to advertise services may have sufficient use to be considered a trademark. If a domain name is being used as a trademark, the person owning the trademark has right of action against any person using it without consent. That is to say, generally, if a person is using a domain name as a trademark (meaning they have sufficient use as per above) another party cannot register a confusingly similar trademark for any purpose.

Essentially, businesses should register domain names which incorporate their strongest trademarks. This means that monitoring trademarks should also mean monitoring domain name registrations. Note that to register a domain name as a trademark one must meet the registrability requirements of a regular trademark.

How Do I Avoid Problems?

Domain names and their relationship with trademarks is still a very new area of law. Since it is continually changing and developing, the best way to avoid problems associated with using domain names as trademarks, or vice versa, is to register your already existing trademark as a domain name immediately. If your trademark (or a confusingly similar one) is already being used by another entity as a domain name, you may have a right of action against them. Further, if you own a domain name and someone else applies for registration of a confusingly similar trademark, you can likely oppose the application as long as your domain name meets the requirements of a trademark. Also keep in mind that you can put the offending domain name on hold through InterNIC if you have priority and if the domain name was registered with InterNIC.

Plaskacz & Associates would be happy to help you assess your specific situation related to internet law.