NOTICE: The following information is being provided as a GUIDELINE ONLY and should NOT be considered as legal advice.
How do I protect my domain name?
Registering your domain name as a trademark is the most effective way of securing protection. You may also wish to register additional domain names that are similar in sound and appearance as trademarks to broaden your protection.
What laws regulate domain names?
The intellectual property laws surrounding domain names are rapidly changing. In Canada, because there is currently no specific domain name legislation, the commercial use of domain names is determined by trademark law. In addition, the Internet Corporation for Assigned Names and Numbers (ICANN) and the Canadian Internet Registration Authority (CIRA) assist in regulating the legitimate use of domain names.
What is the difference between the Internet Corporation for Assigned Names and Numbers (ICANN) and the Canadian Internet Registration Authority (CIRA)?
ICANN regulates top-level domains, such as “.com” and “.org,” but excluding country-code top-level domains.
CIRA regulates Canada’s country-code top-level domain “.ca”.
How can I pursue a third party that owns the domain name for my tradename or trademark?
You have a couple of options:
- Attempt to negotiate the purchase of the domain with the domain-name holder.
- File a complaint with the Internet Corporation for Assigned Names and Numbers (ICANN) or the Canadian Internet Registration Authority (CIRA).
Even if you have grounds to file a complaint with ICANN or CIRA, you may still wish to consider negotiating the purchase of the domain with the domain-name holder. This is because the cost of a typical complaint filed with ICANN or CIRA is generally $5000 or higher.
How do I submit a complaint with ICANN or CIRA?
Typically, the complainant would hire a lawyer or trademark agent to file the complaint with ICANN or CIRA on their behalf because the complaint process is involved and somewhat complicated.
The complainant must provide ICANN or CIRA with some general information and indicate whether they wish to pay for a one- or three-person panel. In addition, and most importantly, the complainant must be able to establish:
- the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- why the respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
- why the domain name(s) should be considered as having been registered and being used in bad faith.
Where can I find more information?
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