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, web sites, etc.
Worldwide
uniqueness
Domain names are unique in that, throughout the world, there can be one and only
one microsoft.com, one and only one ubc.ca , etc.; just as there is at most one
123 Main Street, Vancouver, B.C., Canada.
Meet
Acme Chemicals Ltd.
Consider a hypothetical B.C. business "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 .
Why
the Internet?
Increasingly, companies such as Acme Chemicals Ltd. are finding it useful to
conduct at least some aspects of their business over the Internet. For example,
instead of periodically updating, printing and distributing a "hard copy"
product catalogue, one may establish an Internet web site to present the same
information on a continuously updated basis. Suppliers, customers and potential
customers can access the web site quickly and easily from anywhere in the world
at any time. The web site may include order forms to enable customers to
complete and submit their orders electronically, tools to enable customers to
monitor the status of their orders, an e-mail inquiry capability, and much
more.
Choosing
the right domain name is crucial
A domain name is central to all such activity. To access the web site 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 contact 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.
Multiple
domain names can and should be registered
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
web site.
Others
may want the same domain name, but only one party can have it
Unfortunately for Acme Chemicals Ltd., things are unlikely to be that simple.
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. Any "Acme" business considering establishing an Internet
presence is likely to make acme.com its first choice as a domain name. But,
only one of them can have it.
Domain
Names vs. 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 one
business to identify its goods or services to purchasers. Some important
differences between domain names and trademarks include the following:
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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, for various reasons. A
domain name, by contrast, is either available throughout the world, or it is
not available anywhere.
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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 or
acme-chemicals.com are already registered. However, persons in situations of
this sort should seek professional advice, since a trademark infringement
problem could result.
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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 commences, but in most situations registration is deferred until after use
begins. No use whatever 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.
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A trademark registration must specify the goods and/or services to which the
trademark is applied (i.e. 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, such that consumers are not confused. 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 alternative options. 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. A third
option is to consider whether the previously registered domain name might
nevertheless be made available.
Top
level domains
.com and .ca are examples of top level domains. .com is generally used by
for-profit businesses. .ca is used by Canadian entities of various types. Other
examples are .edu (certain educational institutions), .net (network providers),
.au (Australian entities) and .jp (Japanese entities).
.com
is best for business
It is generally preferable that a for-profit business have a domain name within
the .com domain, since that is where most people expect to find the domain name
of a for-profit business. The .ca domain is an alternative, but it is less well
known than the .com domain. Persons trying to find Acme Chemicals Ltd. via the
Internet are likely to try acme.com, acmechemicals.com, etc. before they think
to try acme.ca. But, 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.
.com
is getting full
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.
Additional
top level domains
To make more domain names available, and in an effort to address the problem
that one and only one business can register acme.com, even though there are
many different "acme" businesses, several additional top level domains have
been created, some specific to different types of users. For example, .biz
applies to businesses, .coop to cooperatives, .name to individuals, .info to
all users, etc. 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. Further, it is
possible to have one and only one acme.biz throughout the world, so the
expanded range of domain name choices may not be all that significant in
practice.
The
"squatting" problem
A large number of domain names have been registered by "squatters" who have no
serious intent to use the domain names. They hope to sell the domain names to
the highest bidder; or, to prevent a competitor from using the domain name.
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.
A
trademark registration may be the solution
A better 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 you from a domain name you have already registered. Such attacks are
becoming fairly common as more businesses turn their attention to the Internet.
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, owners of existing or proposed domain names may need to update their
trademark portfolios accordingly. The topic of domain name conflicts is a
complex area, well beyond the scope of this summary. Suffice it to say that it
is of crucial importance that legal advice be provided by counsel familiar with
the legal and technological aspects of trademarks, domain names and the
Internet. We have the necessary expertise.
acme.ca
is not necessarily available, even if it is not already taken!
If it becomes apparent that acme.com is unavailable, then Acme Chemicals Ltd.
may consider acme.ca to be a perfectly acceptable alternative. But, it is not a
foregone conclusion that a "second level" domain name such as acme.ca will be
available to Acme Chemicals Ltd., even if no one else has taken acme.ca. The
.ca domain administrators apply different domain name 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 second level domain name.
A
trademark registration can be crucial in the .ca domain
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if it is federally incorporated; or,
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if it has its own offices in more than one Canadian province or territory; or,
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if it has registered the trademark ACME in the Canadian Trademarks Office.
These requirements reduce the squatting problem in the .ca domain.
Police
your domain name(s) and trademark(s)!
Even if Acme Chemicals Ltd. registers acme.com, acme.ca, acmechemicals.com,
acme-chemicals.com, etc. a competitor may still manage to register and use a
potentially confusing domain name such as acme.co.uk, acme.bc.ca , etc.
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 web site a trademark which is confusing with a trademark registered by Acme
Chemicals Ltd. Either situation could involve an infringement of the trademark
rights of Acme Chemicals Ltd. We can assist trademark and/or domain name owners
in detecting problems of this sort and in dealing effectively with them.
Where
do I begin?
By having a search conducted to determine whether your preferred domain name(s)
are available. Because use of a domain name could result in an allegation of
trademark infringement, we recommend that trademark searches also be conducted.
We suggest that you consider several alternative domain names, and list them in
order of preference for searching purposes. You may want to have us search
multiple names, as discussed above. Domain name searches of this sort cost
about CA $200. Please refer to our Trademarks brochure for details of trademark
searches and their cost.
What
should I do after the search?
We recommend that you move immediately to register your 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. If you do not reserve your domain name now
some other business may take it. It costs about CA $450 - $600 to have us
review domain name issues with you and register a domain name in the .com or
.ca domains, in the absence of complications.
Summary
We recommend that you carefully consider the distinctive aspects of the identity
which your business presents (or will some day present) to the world, from both
a trademark perspective and an Internet domain name perspective. We can assist
you in the selection, registration and enforcement of both trademarks and
domain names. As competition increases, it becomes progressively more important
to ensure that these vital business assets are appropriately protected.
Information
required to register a domain name
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The preferred domain name, including the preferred top level domain (i.e. .com,
.ca, etc.). Please also indicate second and third choices.
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The full name of the domain name owner.
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A one sentence description of the business conducted by the domain name owner.
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The domain name owner's jurisdiction of incorporation.
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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 trademark ACME CHEMICALS, etc.
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Does the domain name owner have its own offices in more than one Canadian
province or territory? If so, please provide the addresses of each office.
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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. Do not list someone who hates to get e-mail!
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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.) Again, do not list individuals
who hate to get e-mail!
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The name and title of the person who has approved the choice of the domain name
on behalf of the domain name owner.
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(If known) the longitude and latitude coordinates of the domain name owner's
headquarters location.
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(If known) the full hostnames and IP addresses of at least two nameserver hosts
for the selected domain name.
For more information, contact
(Oyen Wiggs Green & Mutala LLP)