You’re a lawyer and motivational speaker who has become rather well known in your field, so you have decided to take your brand to the next level by registering a couple of domain names and filing a trademark application.
Fast-forward five years, and you are now selling motivational books by the tens of thousands and have retired from private practice because you have too many book tours lined up. In the meantime, a jealous colleague (who will be working until he’s 85, as promised upon graduation) has kindly pointed out to you that at least two web sites have popped up using your coined trademark, both in domain names and as a brand name.
Unfortunately, this is not at all uncommon — even if you aren’t a million-dollar-a-month business. These days, there are at least two types of country-code top-level and at least three types of generic top-level domains, which make it hard to keep track of proprietary rights, even for the most sophisticated companies.
Now, with the promise of domains being available in non-Latin based scripts, the task could well become nearly impossible. The result? I see a couple of things in the horizon. First, are trademark holders at risk of losing rights in the trademarks they do have because of non-enforcement? Second, are domain names and trademarks simply not going to be worth the trouble and expense of policing if, as a result of use by others, their value is diluted as well?
As an IP lawyer, I have probably just committed professional suicide by even suggesting this, but practically speaking, how can a company be expected to stay on top of enforcing its rights when to do so is so expensive, and the competing interest in making money and obligations of paying the bills and making payroll probably come first?
So what if a registrant legitimately has a trademark for the same name registered in a foreign jurisdiction that is being used in a domain name on a legitimate web site that sells products or services to the public?
Take the Canadian company Booster Juice. It’s a brilliant and unique idea, right? I had seen exactly the same concept in Australia years before I had heard of it in Canada under the same name. Each company will probably argue that its concept came first, but does it really matter? If each only protected its trademark rights domestically, there isn’t an issue, right? Neither operates in the other’s country “of origin.” Now that both companies are becoming well known and have products being offered in locations around the world, does the same argument apply? Will it be simply a race to see who can register the trademarks and domain names in the jurisdictions in which they each get to first? This is not a new debate, and the legal challenge to keep up with a borderless online space is obvious.
Taking this one step further, what if each company registers its trademark in the language of each country it enters? Is it discrimination not to allow domain names to be registered in foreign languages? Internet users are certainly not all English-speaking, so why not increase access to the Internet, and by extension to your business, that much more? And what of protecting these domains as trademarks in foreign languages? Even if you can, what if the translation ends up being confusing with an existing trademark?
So while the domain market continues to grow, is it fair to allow would-be registrants to register domain names in, say Russian, notwithstanding that in English the root of the domain is registered as a trademark as well as a domain name by a business? As it is, the more popular the words or expression, the more likely it is to be registered with hyphens or slight variations by other parties.
In certain jurisdictions, and in particular in Canada, trademark rights holders are required under the Trade-marks Act to protect statutorily granted trademark rights, but in the face of so many new and existing ways to exploit trademarks on the Internet from any jurisdiction in the world, how can rights holders be expected to police every corner of the Internet and continually enforce misappropriation and misuse of their trademarks? Obviously, they can’t. Search houses can be retained to sweep and monitor the Internet for possible infringing activities, but after the search results have come in and the report has been paid for, many abandon all hope of enforcement because of the time and money required.
Adding to this growing challenge to protect and enforce proprietary rights are all manner of creative ways to make money from domains. On the list are, among other things:
• Domain hijacking: Registration of a domain name that consists of a trademark or other well-known name
registered with the sole purpose of selling it to the trademark owner.
• Domain name front-running: This practice effectively “saves” the desired domain in order to direct the
registrant to a particular seller of domains. The registrar typically takes advantage of the trial period during
which a domain name can be secured before payment is made.
• Reverse domain hijacking: Acquiring a domain name from its owner by accusing the owner of having violated
• Cybersquatting: Registering, trafficking in or using a domain name in bad faith with the intent to profit from the
goodwill of a trademark proprietary to a third party.
• Typosquatting: The registration of domain names that are variations on existing domain names made by way
of typographical errors.
• Type-in traffic: A form of direct navigation in which a domain using particular keywords is registered in order to
direct or divert traffic to a site.
• Domain name drop lists: Lists that contain expired domain names that can be used to locate expiring domain
names of value.
• Domain name speculation: The practice of acquiring domains in a speculative manner with a view to selling
them later at a profit.
• Domain name front-running: The practice of using inside information in order to identify and register domain
names for the purpose of reselling them or otherwise making a profit.
• Domain sniping: The practice of registering a domain name immediately upon its expiry.
• Domain parking: The registration of a domain name with a view to providing services at a future date.
• Domain flipping: The practice of buying domains and quickly reselling them for a profit.
• Domain name warehousing: Registrars obtaining domain names with a view to holding them to be used or
sold for a profit.
I am always impressed by the creative, if somewhat suspect, schemes that people come up with to monetize such things as domain names. Let’s be honest. I’m sorry I didn’t start registering and selling domain names — legitimately, of course — early on in the game.
So how does the holder of trademark rights domain enforce those rights? Having good legal advice at the outset (including from the relevant jurisdiction), the cash, the time, and the appetite for enforcement also help, though strategically speaking, a little preliminary research can go a long way whether or not the matter goes beyond an initial review. The first question one might ask is: does the domain registrant have a legitimate right to use the domain or was it registered in bad faith? If there appears to be a good reason to take the next step, in practice sometimes negotiation directly between the parties works, sometimes a threatening letter from counsel works, and sometimes dispute resolution mechanisms available work. In some cases, however, parties are forced to sue in order to enforce their rights, although hopefully this is an option of last resort. Actually, hiring someone’s Uncle Vinnie would be the last, and certainly not recommended, resort. Just kidding. I only wanted to see if you were still reading.
Sarah Dale-Harris is a lawyer in the intellectual property, technology and interactive entertainment groups at Davis LLP. Her practice focuses on the creation, development, management, commercialization, and enforcement of technology and life sciences-based portfolios and related intellectual property rights. Sarah can be reached at 416-365-3522 or at [email protected].