What is a domain name?
A domain name is unique text that can be entered into a web browser to access websites. The unique text maps on to an alphanumeric IP address linked to a specific website.[i]
How are domain names managed?
A non-profit organisation called the Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for managing the system of domain names and assigning domain names through accredited registers.[ii] In Canada, a non-profit organisation called the Canadian Internet Registration Authority (CIRA) is responsible for managing “.ca” domain registry.[iii] However, registering a domain name with an internet registration authority does not provide protection as the right to use a domain name depends on the trademark law operating in the country or countries in which the website can be accessed.
How can domain names be protected within Canada?
Whilst copyright law within Canada does not protect domain names, registering a domain name as a trademark provides protection under section 26 of the Trademarks Act, 1985.[iv] By applying for a trademark registration prior to purchasing the domain name, an individual or entity seeking to use a domain name can avoid a dispute by identifying already existing names. A search of the trademarks database prior to using a specific name avoids the potential problem of being forced to give up a domain name by someone who already owns a registered trademark which is similar to the one sought. This is particularly useful for domain names which are to be used commercially as businesses can browse existing trademarks to ensure theirs will be unique and clearly differentiable.[v] Disputes related to domain names are dealt with by the World Intellectual Property Office (WIPO).
For example, in a dispute concerning domain names in Wal-Mart Stores, Inc. v. MacLeod, the plaintiff Wal-Mart lodged a complaint with the CDRP (CIRA’s Dispute Resolution Policy) against the defendant Garth MacLeod, a Canadian individual. Wal-Mart had an already registered domain name called “walmartcanada.ca” so they alleged that by registering the domain name “wal-martsucks.com”, MacLeod had registered in bad faith and had infringed Wal-Mart’s trademark in the process. Whilst MacLeod’s use of the domain name was personal rather than commercial, he did attempt to sell it for over $500,000. It was decided that MacLeod’s domain name contained the trademark already registered by Wal-Mart and was therefore confusingly similar. As a result, Wal-Mart sought transfer of the domain name by filing a complaint with the World Intellectual Property Organization Arbitration and Mediation Center. Transfer of the domain name to Wal-Mart succeeded.[vi]
The Body Shop International plc v. Jadick Holdings Ltd was a dispute between The Body Shop International plc and Jadick Holdings Ltd. concerning the domain name “thebodyshop.ca.” The Body Shop claimed that Jadick Holdings had infringed their trademark and registered in bad faith which resulted in the domain name being transferred to The Body Shop.
Furthermore, in Trucksuite LLC v Paul Donofrio et al,[vii] a US company (Trucksuite) sought to do business in Canada by engaging a Canadian company called Paul Donofrio. Donofrio registered the domain name “www.trucksuite.ca” so that no one else could use it within Canada. When negotiations broke down between the two companies, Trucksuite filed a complaint under the CDRP and claimed that they were the rightful owner of the domain name. Trucksuite failed to satisfy the requirements for being an ‘eligible complainant’ in the dispute as they could not prove they had a Canadian presence or that they held a registered trademark with the “.ca” domain.
In Société des loteries du Québec v. International Internet Technologies Inc., a lottery corporation that was owned by the government of Quebec (Société des loteries du Québec) filed a complaint under the CDRP against International Internet Technologies Inc. The dispute concerned the domain name “lotoquebec.com” and the Société des loteries du Québec claimed that their trademark had been infringed and the domain name had been registered in bad faith by the respondent. It was decided that the domain name should be transferred to Société des loteries du Québec.[viii]
A case which demonstrates the complex nature of cross-border domain names is Gary Kremen v. Stephen Cohen (Sex.com) which was a US case involving Canadian parts. Kremen originally registered the domain name ‘Sex.com’ and was involved in a legal dispute with Stephen Cohen as Cohen had transferred the domain to his own name fraudulently. As part of the dispute, Kremen pursued legal action in Canada to regain control of the domain there as well. Cohen was found to have infringed Kremen’s trademark and was held to have unlawfully taken control over the domain name. Kremen was awarded $65 million punitive damages as compensation. This case shows the extent of legal protection of a domain name and the potential remedies available to those who correctly register their domain name first.[ix]
[i] https://www.cloudflare.com/en-gb/learning/dns/glossary/what-is-a-domain-name/
[ii] https://www.icann.org/en/beginners
[iii] https://www.cira.ca/en/about-cira/#:~:text=The%20Canadian%20Internet%20Registration%20Authority,the%20internet%20has%20to%20offer.
[iv] https://laws-lois.justice.gc.ca/eng/acts/T-13/
[v] https://www.trademarkcanada.org/Domain-name-Trademark.htm#:~:text=Register%20A%20Trademark,in%20Canada&text=Trademark%20registration%20is%20the%20most,before%20you%20buy%20the%20domain
[vi] Wal-Mart Stores, Inc. v. MacLeod Case No. D2000-0662 (2000): https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0662.html
[vii] Trucksuite LLC v Paul Donofrio et al, CDRP Decision 00440: https://mcmillan.ca/insights/domain-name-disputes-in-canada-considerations-for-non-canadian-entities/
[viii] Société des loteries du Québec v. Club Lotto International C.L.I. Inc., (2001) 204 F.T.R. 21 (TD): https://ca.vlex.com/vid/v-club-lotto-681142417
[ix] Kremen v Cohen: https://casetext.com/case/kremen-v-cohen-4/
Communications Law