One of the first steps in obtaining domain names is to assess which gTLD and/or ccTLD is appropriate. With the introduction of the new gTLDs there are frequently numerous options to consider. Relevant industry-specific or geographic domains should be carefully considered.
Domain names should be obtained before there is any release of information to the public about the development to which they relate otherwise cyber squatters may seek to obtain the domain names and demand an inflated price to sell them.
Consideration must be given to registering names in multiple languages and for variations which are either used or may be used or which could be used. Registrations should be obtained to allow for future expansion or to prevent or block third parties from obtaining them. The number of variants in issue, combined with the number of TLDs involved, can make the process both complex and expensive.
Typically, there will be a WHOIS search database for each gTLD and ccTLD which can be consulted online to ascertain if a domain name is available to be registered in that TLD.
If the domain name is not a component of an existing registered trademark owned by the brand owner, trademark availability searches should be considered to ensure that using the domain name will not infringe the rights of existing trademark owners or the common law rights of others, particularly traders who carry on business on the Internet. Domain names in the gTLDs are available to businesses and individuals around the world and provide exclusive worldwide rights in any registered domain name. However, these rights are subject to national trademark rights. Because of this, consideration should be given to trademark rights in the countries where the domain will be used to carry on business.
The registration system is first-come-first-served and there is no assessment of registrability or entitlement or a process of opposition as there is for trademarks. A name which is not registrable as a trademark because it is generic or descriptive may still serve as a domain name. The allocation of a domain name is not dependent upon use within a specific territory or limited to specific goods or services with some exceptions.
A notable exception applies for .ca domain names. To obtain a registration in the .ca domain, applicants must satisfy the Canadian presence requirements. In general, an applicant must have a nexus with Canada including being a Canadian citizen, permanent resident or a corporation incorporated under the laws of Canada or a province or own a trademark registered in Canada. In cases where a trademark provides the nexus, an application is limited to a .ca domain name consisting of or including to the exact word component of the registered mark.
Domain names serve as an address and each name must be unique but small differences can distinguish one from another within the domain name system. Conflicts can occur between companies or individuals who have legitimate rights to the same name. For example, many traders use the words “auto club” as a part of their brand or business name but only
If you have questions, please contact me at mckeown@gsnh.com.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared on the Lawyer’s Daily website published by LexisNexis Canada Inc.