Trade Marks on the Internet copyright 1996-2003; last updated August 14, 2003




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The Intersection between Trade Marks and Domain Names


The ability of a corporation to obtain a domain name that reflects own trade name, or the trade mark of its goods or services, provides an economic advantage for advertising and promotion. In this respect, a domain name serves many of the same functions as a trade mark.

Because trade marks must be associated with wares or services, a variety of companies can own and use the exact same trade mark unrelated wares or services. For example, CHAMPION has been registered as trade mark in Canada for a variety of wares and services including, spark plugs, sports clothing, dog food, tobacco products, hosiery, paper, charter airline and air compressors. Similarly, individuals or sports teams might want to use the word CHAMPION to describe their business on the Internet. Due to the structure of the domain name system, there can be only one champion.com. In light of all the potential claimants, the question is, who gets to "own" the name CHAMPION on the Internet? In other words, who gets to register champion.com as a web site address?10  That’s not always an easy question to answer.

Recall that domain names are the nickname associated with IP numbers and are used to identify web sites. Like IP numbers, domain names must be unique in order for traffic to flow over the Internet. Even small variations in a domain name, changing or adding a single letter, create an entirely different domain name. People aren't as precise as computers, and even though the computer won’t confuse one web site for another, people may - that is one situation in which trade mark law has come into conflict with the domain name system. Competitors can use confusingly similar domain names to unfairly compete.

"USING" A TRADE MARK ON THE INTERNET

Using Your Own Mark


A trade mark is "used", for the purposes of Canadian trade mark law on wares (goods) when the trade mark is marked on the product or its packaging or is in some other way associated with the wares when property or possession of the wares is transferred. In Canada, a trade mark is used in association with services when the trade mark is used to advertise the services or is displayed during the performance of the services.11 Canadian trade mark rights depend upon the owner actually using, or intending to use, the trade mark in Canada. Displaying a trade mark on a web page is likely use of the trade mark in association with the service of providing information services over the Internet.

When trade mark appear on the Internet, in what country is the mark being used? If access to the web page is free, is the trade mark being used “in the normal course of trade” or “at the time of the transfer in the property or possession” of any wares? It is unclear where the trade mark is being used since web sites are available from anywhere in the world.  As discussed in the Jurisdiction and Enforcement Issues section below, the answer may turn on whether the web site is "passive" or "aggressive". A "passive" web site is one that merely advertises or provides information for a local market; an "aggressive" web site is one that actively targets, solicits or interacts with customers in another jurisdiction.


Registering Your Trade Marks as Domain Names


Prudent companies register all their important corporate names and trade marks as domain names in the commercial TLDs (the .com, .net, .biz, .info and .org registries) and in each of the ccTLDs of the countries in which they do, or plan to do business. Many companies also take the precautionary step of registering variations and misspellings of their trade marks and trade names. For example a company wanting the domain name trademark.com might also register trade-mark.com, trademarks.com and trade-marks.com as well as corresponding registrations in the .net, .org, .biz, .info and ccTLDs. You are permitted to register an unlimited number of domain names in the commercial TLDs and the .ca registry.

Registering your trade marks and potential trade marks as domain names makes eminent good sense; if you’ve got them, no one else can use them. Also, it costs significantly less to register a domain name than it does to recover the domain name from someone else. The asking price of online domain name merchants depends on the name but seems to begin at about $5,000.00, arbitration fees begin at about $1,500 and litigation can be significantly more expensive.

Interestingly, the FTC has obtained an order from a U.S. federal judge to prevent a Canadian man from pressuring domain name owners into registering unnecessary variations of their domain names and trade marks.

Registering Domain Names as Trade Marks


If you are using your domain name as a trade mark, you may want to register it as a trade mark (ideally with and without the generic suffix).

The U.S. Patent and Trade mark Office issued a position paper on the registration of domain names as trade marks. The Office takes the position that the period and generic suffix attached to a domain name (the TLD portion of the domain name) will not form part of the trade mark, in the same way that the "800" portion of a 1-800 telephone number will not form part of a trade mark. "Most applicants have been applying for marks in the form of XYZ.COM and the [Office] is treating the .COM portion of the mark like the 800 part of telephone number applications," the paper states. "That portion of the mark has no trade mark significance and, so long as it is connected by the period to an arbitrary or suggestive term, it will not affect the registrability of the mark as a whole."

The Canadian Intellectual Property Office (“CIPO”) issued a practice notice in September of 1999 that when trade marks consist of, or contain terms such as, .com, .ca, .uk etc. the marks will, in accordance with paragraph 12(1)(b) of the Trade marks Act, be examined for any clearly descriptive or deceptively misdescriptive meanings, in English or French, as to the character or quality, place of origin, conditions of, or persons employed in the production of the associated wares or the performance of the services. For example, CIPO considers the registry suffixes to have the following meanings: .com - commercial entity; .ca - Canada; and .uk - United Kingdom. Not all registries require an applicant to actually have the purported attribute of the registry. For example, .com is used by not-for-profit enterprises. A trade mark registration may be attacked by opponents on this basis. In addition, CIPO is of the opinion that the addition of the .com, .ca or other registry suffix to a clearly descriptive or deceptively misdescriptive mark will not make it registrable.

At one point, Industry Canada’s Intellectual Property Directorate appointed a Committee of Intellectual Property Experts to study the interface between domain names and trade mark law. The authors have been told that no report was ever issued. Apparently, the Committee concluded that existing Canadian trade mark law provided adequate protection to trade mark owners against potential trade mark infringement through the registration and use of domain names.


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