Protection of Trade-mark Rights and the Internet

By Alain D. Bourassa
July 24, 2007

The problems with “cybersquatters”, persons known to register domain names with the sole intention of profiting from them, is a serious issue to trade-mark owners seeking to establish an Internet presence.

It is possible for trade-mark owners to take steps to better protect themselves against unwanted and unauthorized domain name registrations:

Consider the new domains being offered and find out which ones you may qualify for as an organization and register them.

Trade-mark owners should register their trade-marks at the .com, .net, .org and .ca levels and further consideration should be given to registering country level domains if having dealings with foreign markets.

Misspellings of trade-marks should be registered as well since “typosquatters” will often proceed to register these domains and link them to their own website.

Serious consideration should be given to registering the “sucks” version of your trade­marks since the case law to date suggests that once registered by a third party, be it a consumer advocacy group or disgruntled employee, they are extremely difficult to retrieve.

Recourse may be had to online arbitration in the event a “cybersquatter” registers your marks at the .com/.net/.org level. The administrative proceeding, pursuant to the Uniform Dispute Resolution Policy, is conducted on the basis of written submissions and is designed to take less than sixty days. The remedies are limited to cancellation of the registrant’s domain name or transfer of the domain name to the trade-mark holder. Finally, the procedure does not purport to preempt civil proceedings for the purpose of asserting intellectual property rights.

       With respect to .ca domain names, a .ca dispute resolution policy is in place and easily available.

This article was originally published in the July 2007 edition of the Ottawa Business Journal.


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