Here at WebFuel, we love inviting guest bloggers. Why? Because they bring fresh ideas to the table, while providing great insights from their specific area of expertise. This week we welcome back Ottawa lawyer James Katz. In the past James has blogged for WebFuel about Domain Name Dispute Resolution Set to Change for dot-Ca Domains. This week James returns with his second instalment in this series Domain Name Disputes.

Guest Post by James Katz

As commerce over the Internet gains momentum, the economic value of Domain Names will continue to increase. This economic value is derived from the Domain Name owner’s exclusive right to direct traffic to that Domain Name’s corresponding website, to exclude anyone else from using the same Domain Name, and from the fact that no one else can register the same Domain Name at the same time. Put another way, Domain Names have economic value due to their desirability (i.e. their ability to help guide traffic to their owner’s Internet site) and their scarcity (no two Domain Names in the same registry system are identical). It is because of this recognized economic value and the rights given to Domain Name owner’s that Canadian Court’s have recently confirmed what most businesses with a presence on the Internet already knew: that Domain Names are a form of personal property, and as such, can be used, managed and leveraged like any other asset of a business.

Like other types of personal property, Domain Names are often the subject of ownership disputes between parties. A cost effective and quick way for a complainant to seek redress is to rely on the private arbitration systems put in place by the Internet Corporation for Assigned Names and Numbers (“ICANN”), which regulated the popular dot-com, dot-org, dot-net, dot-info and other registry systems, or the Canadian Internet Registration Authority (“CIRA”), which administers Canada’s own dot-ca system. In all cases, owners of Domain Names (termed “registrants”) are required, as a condition of ownership of the Domain Name, to submit to and be bound by these dispute resolution processes.

As alluded to in my blog post back in August, CIRA’s dispute resolution policy was recently amended to more closely mirror that of ICANN’s policy. So, since August of this year, both dispute resolution policies can now be used to cancel or transfer the registration of Internet Domain Names that a complaining party successfully proves were registered in bad faith. Under both systems, in order for a complainant to succeed, it must prove a) that it has rights in and to the trade-name or trade-mark that comprises the Domain Name at issue; b) that the offending Domain Name is confusingly similar or identical to the complainant’s trade-name or trade-mark; c) that the registrant of the offending Domain Name has no legitimate interest in the Domain Name; and d) that the registration of the offending Domain Name was done in bad faith.

The threshold element for exerting ownership over a Domain Name is demonstrating to the arbitration panel that you have acquired and maintained trade-mark rights in the words that make up the Domain Name itself. This means that you will have to prove that the words that you are seeking a monopoly over act to distinguish your business’ wares and services from those of others in the marketplace. In Canada this is most easily accomplished by registering your trade-marks with the Canadian Intellectual Property Office (CIPO). Once a business has a registered trade-mark, the registration acts as prima facie proof that the trade-mark in question is valid, and is the property of the registered owner.

Although registration of a trade-mark is not a prerequisite to being successful in a Domain Name dispute, proving that you have acquired “common law” trade-mark rights will require that you, as the complainant, file additional evidence, such as proof of sales and other sensitive business information, with the adjudicating body.  This will also add to the time and expense required to make out your claim, which will far outweigh the fairly low cost of obtaining and maintaining a registered Canadian Trade-Mark.

The lesson is therefore clear:  if you are serious about properly controlling your business’ Internet presence, you should, at the very least, register your business name as a trade-mark in Canada.  Even with only a Canadian Registered Trade-Mark you will be more easily able to secure ownership over a confusingly similar Domain Name held by persons in other countries.

It also goes without saying that protecting your online presence should also include purchasing all available Domain Names that are, either by how they are sounded or appear, closely resemble your trade-name or trade-mark.  Given that Domain Names can often be secured for a nominal fee, there really is no downside to putting this type of protection in place as soon as you contemplate an online business presence.

One final note on this topic: using the dispute resolution procedures set out by either CIRA or ICANN is not your only remedy should you have a Domain Name dispute.  Depending on the facts of a given case, the Superior Courts of the provinces (such as the Ontario Superior Court of Justice) will adjudicate Domain Name disputes, just as the Courts will adjudicate over any other dispute concerning property.  In fact both CIRA and ICANN policies allow for this to take place, and those organizations will defer to the judgment of the Court.  The major drawback to initiating Court proceedings to rule on a Domain Name ownership issue is the higher cost associated with launching a Court action (relative to proceeding under CIRA’s or ICANN’s policies), the length of time it takes to achieve a result (often many months or years), and the danger of having to pay the other side’s legal costs should your claim be rejected by the Court.

In closing, unlocking your online business potential includes understanding the ownership rights and potential of your Domain Name, so that, if needed, you can properly exert those rights in order to protect your online business presence.

James Katz is a lawyer with the Ottawa law firm BrazeauSeller LLP. His practice focuses primarily on Internet, Social Media and Trade-Marks law.

Disclaimer: The contents of this Blog post, and associated opinions  are those of its Author, and do not necessarily represent the opinions of WebFuel, or its employees.

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