Internet Domain Name Protection

The Internet is not a physical or tangible entity, but rather a giant network which interconnects innumerable smaller groups of linked computer networks and is thus a network of networks. In 1981, fewer than 300 computers were linked to the Internet, and by 1989 the number stood at just under 90,000 computers. It is estimated that as of 1999, approximately 200,000,000 users, including personal computers and host computers, are connected to the Internet. Unfortunately, the nature of the Internet is such that it is very difficult if not impossible to determine the size at any given time since it is growing minute by minute.

The Internet had its origins in 1969 as an experimental project at the US Advanced Research Project Agency (ARPA) and was called ARPANET. ARPA networked computers and computer networks owned by the military defence contractors and university laboratories conducting defence related research. The network later allowed researchers across the country to access directly the extremely powerful super-computers located in few key universities and laboratories. ARPANET went far beyond its research origins in the United States to encompass universities, corporations, and many people around the world, and came to be called the Internet. No single entity, academic, corporate, governmental, or non-profit organization administers the Internet. It exists and functions because hundreds of thousands of separate operators of computers and computer networks use common transfer protocols to exchange information with other computers. There is no centralized storage location or communications channel for the Internet, and it would not be technically feasible for a single entity to control all the information conveyed on the Internet.

The Internet's open distributed decentralized nature stands in sharp contrast to earlier information systems. Private information services such as WEST LAWJ, LEXUS/NEXUSJ and DIALOGJ contain large store houses of information that may be accessed from the Internet with the appropriate passwords and access software. However, these various databases are not linked together in a single whole as is the World Wide Web.

The World Wide Web has become a popular medium because of its open distributed and easy-to-use nature. Rather than requiring a user to purchase new software or hardware and to learn a new kind of system for each database of information to be accessed, the web environment provides an easy means of access to a wide variety of information sources. The openness of the web also makes it easy for disseminators of information to reach their intended audiences without regard to the type of computer software that may be used by the potential user.

Many organizations now have Ahome pages@ on the web. The home page will typically contain links that guide the user to other sources of information about the organization. The links may lead to a different location in the same document, or to different documents on the same website.

Links may also take the user from the original website to a different site located on another computer connected to the Internet. It is these millions of links between websites that make the web such a powerful tool for sharing knowledge.

Protecting Domain Names

A domain name is a unique address of a website on the Internet for an individual business or other entity. Often this address will contain a trade mark or unique identifier of the business. For example, a generic Internet address (URL: Uniform Resource Locator) may be in the form of www.name.com, where the name element may be the business name, trade mark, or other identifier. This means that the particular address of the website is unique. No two sites can have the same address on the Internet.

The element Aname@in our example is referred to as the second level domain. The .com element is referred to as the top level domain. Some domain names have sub-domains such as www.name.edm.ab.ca. Top level domains (TLD) are either characterized as generic (as in the case of the .com domain), or geographic as in the case of the canadian .ca domain. The geographic abbreviations are the two letter country codes from the International ISO Standards. Aspects of each of these types of domain names are described below.

Domain Names and Trademarks

Often a URL or Internet site address will contain a trade mark as the second level domain as a unique identifier of a business. For example, the general Internet URL may be in the form of www.trademark.com where the trade mark element may be the business trade mark.

A problem arises from basic principles of Trade Mark Law and the nature of the domain system; namely, each domain name must be unique. In addition, a specific domain name can only be associated with one entity. Since most elements of the URL are generic, the distinguishing element in a domain will typically be the second level domain name or trade mark in our example. This should be contrasted with trade mark law where more than one person can legitimately use the same names as trade marks so long as the trade marks are used for different products or services, and create no likelihood of confusion.

Since two or more entities may both have legitimate rights to use the same name as a trade mark (which are used in association with different goods or services) a dispute may arise as to which entity should have the exclusive right to use the trade mark as part of their Internet address. This problem is compounded by the global nature of the Internet since the registration of a domain name containing a trade mark may include many legitimate uses of the trade mark in jurisdictions other than those in which the registrant is carrying on business.

Disputes that arise due to this incompatibility between the Internet domain names system and the traditional trade mark doctrine of confusion is resolved by the general law on the adoption and use of trade marks in each jurisdiction, and where applicable by the application of the relevant domain name dispute policy implemented by the applicable domain name registrar.

How to Obtain a Domain Name

In order to obtain a domain name, an applicant will typically approach the registrar of the applicable top level domain and request assignment of the desired domain name in accordance with the applicable domain name allocation policies of that registrar. In the US, domain name registration activity has been delegated to a number of registrars in a franchise type approach (some franchisees are Internic, Domain Bank, Register.com, Namesecure.com, and Signature.com). Most readers will be familiar with Internic operated by Network Solutions Incorporated (NSI). In the past the domain name policies of NSI have created some controversy and litigation.

An applicant for a domain name should consider the top level domain for which he or she wishes to obtain a registration. In Canada, the top level domain name is .ca, and the generic top level domain names in the United States include .com, .edu, .net, .us and .org. There are a number of Internet sites that make it possible to instantaneously check whether or not the domain name which you wish to register is available. Registration of a domain name will not prevent a party from disputing the validity of the registration. The applicant would be well advised to seek trade mark protection for any distinctive second level domain name which in relation to the services and transactions provided through use of the website, and otherwise, which may relate to the applicants products or services. Should the applicant’s present or future business activities occur in part in the US, it would be prudent to register a US Federal Trade Mark.

The most popular top level domain for business websites in recent years is the .com domain.

The applicant usually completes an electronic form to request a domain name. NSI will register almost any domain name provided the exact domain name has not already been registered on the applicable top level domain. For example, xyz.com can be registered even if xyz.net has already been registered. Unlike the .ca domain, there are no sub-domains in generic top level domains, and therefore, many businesses prefer the NSI domain names over geographical domain names since NSI domain names have a more global look and feel.

Protecting a Domain Name

A business seeking to establish itself on the Internet should ensure compliance with the applicable registrar’s domain name policy. To ensure continued use of a .com top level domain users should secure US or other registered trade marks to protect that second level domain name. The importance of ensuring the continued right to use the domain name should make this an easy business decision. The United States Patent and Trade Mark Office has reported substantial increase in the number of applications for trade marks as domain names as result of increased activity on the world wide web.

When the continued use of a domain name is challenged by another party the domain name owner should review its right in the context of trade mark and Intellectual and Property Law, and the domain name policies of the applicable registrar. In some cases, a domain name holder should use the domain name registrar’s policy to resolve the dispute.

The Canadian Internet Registration Authority (CIRA) has mandated a Domain Name Dispute Resolution Policy (CDRP) which is a mandatory administration dispute resolution process which is binding on .ca domain name registrants because it is incorporated by reference into .ca domain name registration agreements.

The CDRP is modelled on the Uniform Domain Name Dispute Resolution Policy (UDRP) mandated by the International American based Internet Corporation for Assigned Names and Numbers (ICANN) and applicable to .com, .org, .net and other domain names. The CDRP contains certain provisions that are distinctly Canadian, however and are designed to improve upon the UDRP.

Therefore, the owner of a .ca domain registration having a dispute can avail himself of the Domain Name Dispute Resolution Policy (CDRP) in order to obtain resolution of the conflict.

Complainants under the CDRP must satisfy the CIRA requirements for registrants in respect of a domain name that is subject of the proceedings or be the owner of a trademark registered in the Canadian Intellectual Property Office that is the basis of a complaint. To succeed in a CDRP complaint a complainant must prove:

1. the disputed domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration of the domain name and continues to have such rights.
2. the registrant has no legitimate interest in domain name; and
3. the registrant registered the domain name in bad faith.

Therefore the International Internet Corporation for Assigned Names and Numbers (ICANN) has adopted the Uniform Domain Name Dispute Resolution Policy known as UDRP. This is applicable to .com, .net and .org to level domains. This policy can be found at www.icann.org/udrp/udrp-schedule.htm.

The Canadian Internet Registration Authority (CIRA) has adopted the Domain Name Dispute Resolution Policy namely (CDRP) which is modelled on the ICANN UDRP Legislation. Information on the Canadian Internet Registration Authority can be found at www.cira.ca.

In some circumstances, the best response may to be to bring an action for infringement of the domain name owner’s trade mark. In such a case, the owner may seek an order to expunge or limit the complainant’s trade mark registration. Obviously such a suit must be based on solid trade mark rights.

The best approach for a business that wishes to protect its continued use of its domain name is to secure registration of trade marks in applicable jurisdictions where substantial activity concerning the website it likely to occur, and most importantly, in jurisdictions applicable to the relevant registrar under which the top level domain was issued.

Contact

Mark A. Koch Professional Corporation & Hamilton Invention Center

• 583 Main St E
• Hamilton, On
• L8M 1J4
• 905 549-5880 (Phone)
• 905 296-8709 (Fax)
• 800 947-7572 (Toll Free)