Domain Names

What are domain names?

Domain names are electronic addresses which enable computers to communicate over the Internet. Examples include microsoft.com, ibm.net, ubc.ca, vancouver.cbc.ca, and our own patentable.com. Domain names serve as addresses for e-mail and websites.

Are they unique?

Throughout the world, there can be one and only one microsoft.com, one and only one ubc.ca, etc. — just as there can be only one 123 Main Street in Vancouver, Canada.

What sort of variations exist?

Consider a hypothetical British Columbia business called "Acme Chemicals Ltd." which produces and sells industrial chemicals. Acme Chemicals Ltd. has suppliers in Canada and the United States. It has customers in Canada, the United States, and the Far East. Appropriate domain names for Acme Chemicals Ltd. might be acme.com, acme.ca or acme.bc.ca. Other, perhaps less desirable, possibilities include acmechemicals.com, acme-chemicals.com, acmechemicals.ca, or acme-chemicals.ca.

What’s important about the choice of domain name?

A domain name is central to all web-based activity an organization conducts. To access the website of Acme Chemicals Ltd. or to send e-mail to the company, one must know the company’s domain name. It is highly desirable to have a domain name which will occur readily to anyone wishing to contract the company. In general, a short domain name incorporating the distinctive part of the name of the underlying business is best. Thus, acme.com is probably preferable to acmechemicals.com.

Can multiple domain names be registered?

They can and should be. To minimize the possibility of customers being led astray, Acme Chemicals Ltd. may wish to register multiple domain names. If Acme registers all of the obvious domain names choices, then its customers will be led unerringly to its website.

Can one party have a given domain name?

Yes. Unfortunately for Acme Chemicals Ltd., there are probably many businesses named "Acme" something or other. The others may have nothing to do with industrial chemicals and they may be scattered around the globe. But "Acme" business considering establishing an Internet presence is likely to make acme.com its first choice as a domain name and only one of them can have it.

What’s the difference between domain names and trademarks?

Some of the problems peculiar to domain names are more easily understood by comparing domain names to trademarks. A trademark (such as "Acme") is used by a business to identify its goods or services to purchasers. Some important differences between domain names and trademarks include the following:

Generally, in order to assert exclusivity in a trademark, the trademark owner must register the trademark in each country of interest. The trademark may be available in some countries but unavailable in others. A domain name, by contrast, is either available throughout the world, or it is not available anywhere.
The trademark concept of confusion does not apply to domain names. If the trademark "Acme" is registered in Canada for industrial chemicals, no one may register a confusing trademark such as "Acme Chemicals" for the same goods in Canada. But a domain name such as acmechemical.com may be registered even if similar domain names such as acme-chemical.com, acmechemicals.com oracme-chemicals.com are already registered. However, persons in situations of this sort should seek professional advice, since a trademark infringement problem could result.
It is normally necessary to commence actual marketplace use of a trademark before the trademark can be registered. One may apply for registration before use, but in most situations registration is deferred until after use begins. But no use whatsoever is required to register a domain name. This makes it possible to reserve an appropriate Internet domain name at an early stage, but, this also gives rise to the "squatting" problem discussed below.
A trademark registration must specify the goods and/or services to which the trademark is applied (e.g. various industrial chemicals in the case of Acme Chemicals Ltd.). It is possible for different businesses to register the same trademark in the same country, so long as the registrations pertain to different goods or services. For example, another business may register "Acme" as a trademark for bicycles, even though Acme Chemicals Ltd. previously registered the identical trademark for industrial chemicals. There is no need to specify goods
or services in registering a domain name. Accordingly, a conflict will arise if two businesses want the same domain name, regardless of where each business is located, and regardless of any differences between their goods or services.

What if the preferred domain name is already taken?

If another party has already registered acme.com, then Acme Chemicals Ltd. will have to consider one of several alternatives. One option is to see if a different, possibly less desirable, domain name such as acmechemicals.com is available. A second option is to consider whether an acceptable domain name is available in a different top-level domain, such as the .ca domain (as opposed to .com). A third option is to consider whether the previously registered domain name might nevertheless be made available.

What are top-level domains?

Prominent examples include .com (generally used by for-profit businesses) and .ca (used by Canadian entities of various types). Other examples are.edu (certain educational institutions), .net (network providers),.au (Australian entities) and .jp (Japanese entities).

What’s best for business?

It is generally preferable that a for-profit enterprise have a domain name within the .com top-level domain, since that is what most people associate with business. The .ca top-level domain is a good alternative, but it is less well known than .com. Persons trying to find Acme Chemicals Ltd. via the Internet are likely to try acme.com, and even acmechemicals.com and other alternatives before they think to try acme.ca. Although, if Acme Chemicals Ltd. can do a good job of promoting its domain name, it may be able to eliminate much of the uncertainty, no matter what the name is. Moreover, even if acme.com is available, Acme Chemicals Ltd. may be well advised to register both acme.com and acme.ca in order to maximize the likelihood that persons attempting to contact it via the Internet will succeed.

But is there room for everyone?

There is a limit to the number of domain names that can be allocated within each top-level domain. The .com domain is rapidly approaching its limit as businesses race to secure a place within that domain.

What are the alternative top-level domains?

To make more domain names available, and in an effort to address the problem of domain name uniqueness, several additional top-level domains have been created, some specific to different types of users. For example, .biz applies to businesses, .coop to cooperatives, and .name to individuals. This opens up large pools of new domain names, but some concerns remain. Many observers expect .com to remain the domain of choice for for-profit businesses, since that is the domain most people are likely to try first when attempting to contact a business over the Internet.

What is "squatting"?

A large number of domain names have been registered by "squatters" who have no serious intent to use them. They hope to sell the domain names to the highest bidder or to prevent a competitor from using them. Thus, Acme Chemicals Ltd. may discover that a squatter has registered acme.com, but is perhaps willing to sell it for the right price. If Acme Chemicals Ltd. feels that acme.com is the only realistic choice for its Internet domain name, then it may attempt to negotiate an acceptable price with the squatter.

Can a trademark registration be the solution?

Yes. A good strategy may be to determine whether the squatter can be dislodged by relying on the "Acme" trademark registration owned by Acme Chemicals Ltd. The authorities who administer the .com domain have established a dispute-resolution policy in which trademarks play a critical role. A trademark registration can also be of vital importance, should another party attempt to dislodge someone from a domain name they have already registered.

In either case, it is usually important to ensure that the registered trademark is identical to the word(s) forming the distinctive part of the domain name. Thus, domain name owners may need to update their trademark portfolios accordingly. Domain name conflicts are a complex area, and it is of crucial importance that legal advice be provided by counsel familiar with the legal and technological aspects of trademarks and the Internet.

Are untaken domain names necessarily available?

No, it is not a foregone conclusion that a second-level domain name such as acme.ca will be available upon request, even if no one else has taken it. The .ca domain administrators apply different allocation policies than those applied by the .com domain administrators. Conceivably, Acme Chemicals Ltd. may only qualify, within the .ca domain, for a third-level domain name such as acme.bc.ca; or, a fourth-level name such as acme.vancouver.bc.ca. It is obviously preferable to qualify for a higher-level and simpler domain name.

What ongoing due diligence should be done?

Even if Acme Chemicals Ltd. registers acme.com, acme.ca, acmechemicals.com, and acme-chemicals.com, a competitor may still manage to register and use a potentially confusing domain name such as acme.co.uk or acme.bc.ca. Additionally, although a competitor’s domain name(s) may be dissimilar to the domain name(s) registered by Acme Chemicals Ltd., the competitor may display on its website a trademark that can be confused with a trademark registered by Acme Chemicals Ltd. Either situation could involve an infringement of the trademark rights of Acme Chemicals Ltd. Trademark and/or domain name owners need to detect problems of this sort and deal effectively with them.

What is the right first step?

A good first step is to have a search conducted to determine whether a preferred domain name(s) are available. Because use of a domain name could result in an allegation of trademark infringement, trademark searches should also be conducted. Considering several alternative domain names, and listing them in order of preference for searching purposes is a good practice. Multiple domain name searches cost about C$200. Please see the Trademarks FAQ for further information regarding trademark searches and their cost.

What should I do after the search?

The next step should be immediate registration of desired domain name(s), if available. Squatters are busily snapping up names they hope to sell back to the highest bidder. Moreover, very few trademarks (which are a good choice as the distinctive part of a domain name) are unique throughout the world, irrespective of goods or services. The cost for a review of domain name issues and registration of a domain name in the .com or .ca domains is about C$450 – $600, barring complications.

What about longer-term considerations?

Businesses should carefully consider the distinctive aspects of their identity, now and in the future, from both a trademark perspective and an Internet-domain name perspective — and take appropriate steps regarding selection, registration and enforcement. As competition increases, it becomes progressively more important to ensure that these vital business assets are appropriately protected.

What information is required to register a domain name?

The preferred domain name, including the preferred top-level domain (i.e. .com, .ca, etc.), along with second and third choices.
The full name of the domain name owner.
A one-sentence description of the business conducted by the domain name owner.
The domain name owner’s jurisdiction of incorporation.
Particulars of any Canadian or foreign trademark registrations (or pending applications for registration) covering trademarks which are identical to the distinctive part of the preferred domain name. For example, if the preferred domain name is acme.com, a relevant trademark registration would cover the trademark "Acme"; if the preferred domain name is acme-chemicals.com, a relevant trademark registration would cover the trademarks such as "Acme Chemicals".
An indication of whether or not the domain name owner has its own offices in more than one Canadian province or territory; and if so, the addresses of each office.
The name, title, postal address, telephone number and fax number of the individual who is to be responsible for administrative and/or billing matters relating to the domain name.
The name, title, postal address, telephone number and fax number of the individual who is to be responsible for technical matters relating to the domain name. Two different technical personnel can be specified, but full particulars are required for each individual.
The name and title of the person who has approved the choice of the domain name on behalf of the domain name owner.
The longitude and latitude coordinates of the domain name owner’s headquarters (if known).
The full host names and IP addresses of at least two name-server hosts for the selected domain name (if known).

For more information, contact mail@patentable.com (Oyen Wiggs Green & Mutala LLP)