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:
- 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.
- the registrant has no legitimate interest in domain name; and
- 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.