Domain Names and Trademark Infringement

Owning and using domain names is not automatically trademark infringement. A trademark is not a monopoly of all domain names with the trademark.
Some trademark bullies have tried to claim that they have a monopoly of all domain names containing their registered trademark. Often, domain name holders give in to these bullies. However, some have not.

Rule for Domain Name Disputes based on Trademark Ownership:

For an Applicant to be successful in having a domain name transferred to it, under the UDRP, it has to prove three elements:

(1) the domain name is identical to a trademark or service mark in which the complainant has rights;

(2) the respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

This rule is based on an agreement that a domain name registrant agrees to when registering their domain name. Satisfying only one or two elements of this rule is insufficient to be successful in a UDRP or CDRP proceeding, however, some arbitration panelists disagree or don’t care.

Molson Canada brought a UDRP proceeding against Douglas Black for the canadian.biz domain name and won. Mr. Black decided to fight back.

In Black v. Molson Canada, a registrant of the domain name <canadian.biz> brought an application before the Superior Court of Ontario for a declaration that he was the rightful registrant of that domain name. Justice B. Wright decided the matter and stated that:

Simply because a domain name is identical or similar to a trade-mark name should not result in the transfer of the domain name to the trade-mark owner. In my view, unless there is some evidence that the usage of the domain name infringes on the use of the trade-mark name, a person other than the owner of the trade-mark should be able to continue to use the domain name.

WIC Television sued ITV Technologies over their itv.net domain name in Canada.

In ITV Technologies Inc. v. WIC Television Ltd., 2003 FC 1056 (CanLII), Madam Justice Tremblay-Lamer of the Federal Court of Canada followed Justice Wright’s conclusion, stating:

[177]       Furthermore, in my opinion, the fact that WIC was the owner of the trade-mark ITV as a word mark did not entitle it to a monopoly of all domain names with the prefix ITV. A similar conclusion was reached by Wright J. of the Ontario Superior Court of Justice in the case of Black v. Molson Canada, 2002 CanLII 49493 (ON SC), [2002] O.J. No. 2820.

Lojas Renner was another trademark bully that brought a UDRP proceeding regarding the renner.com domain name that Tucows.com Co. owned. Tucows short circuited the UDRP proceeding and brought an application for declaratory relief in the Superior Court of Ontario.

The Ontario Court of Appeal decided that a .com domain name was a type of property and that the court had jurisdiction to decide the matter. Tucows.com Co. v. Lojas Renner S.A. 106 O.R. (3d) 561

 

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David Michaels, J.D., B.Eng., CHRM is a legal blogger (and a trained attorney) who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993. David is a brand consultant, a writer, an eCommerce entrepreneur, and an aeronautical engineer. http://ca.linkedin.com/in/davidtmichaels/ Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author's notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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