Canada: Incorporating Domain Name Disputes As Part Of Your Online Brand Enforcement Strategy

Last Updated: May 14 2019
Article by Ashlee Froese

Selecting the right domain name for your company's online profile is a critical component of your company's brand strategy. Of course, you want to select the ".com" version of your company's brand name, as well as your company's product/service names. You may also want to secure the country code TLD version, such as ".ca", ".us", etc. But we are all well aware that the cyber world is easy pickings for cyber squatters to trade off of your goodwill. Consider also registering domain names that are common misspellings/variations of your brand name, such as "brand-canada.com", "bardn.com", etc. Compiling a comprehensive domain name portfolio that makes it more challenging for cyber squatters to register domain names that incorporate your brand name is a smart strategic play. But what happens if you come across domain names that incorporate your company's brand, or something confusingly similar thereto?

Domain Name Dispute Resolution Proceedings

There is a common misconception that if something nefarious happens online, there is little that can be done to enforce your rights. This is not true. During the inception of the internet, big brands (keen to ensure that the online world took into account concerns of intellectual property rights holders) advocated that there would be a mechanism embedded into the domain name registration process that facilitated brand enforcement against online squatters. As such, whenever a domain name registrar, such as Go Daddy, sells a domain name to a client (including cyber squatters), as part of the domain name registration agreement, there is a provision that governs any dispute over a domain name as it relates to a 3rd party brand. This is called a domain name dispute resolution proceeding.

Domain name dispute resolution proceedings (the "Tribunal") are expeditious and cost effective proceedings that are governed by tribunals. The Tribunal is done in writing, with no court hearings and/or cross examination, and is governed by a 1 or 3 person panel. As compared to traditional litigation, the matter is determined fairly fast – within 3-6 months. The outcome is either the domain name stays with the disputed owner or ownership is transferred over to the brand disputing the ownership.

Best Steps Forward

The governing legislation varies depending on the type of domain name registration. For example, disputes relating to ".com" domain name registrations are governed by the Uniform Dispute Resolution Procedure. Disputes related to ".ca" domain name registrations are governed by the Canadian Dispute Resolution Procedure. There are clear similarities between the governing legislations. There are also slight variances, as well.

Devising your Online Portfolio

Regardless of whether your company has an e-commerce platform or uses its website as a digital marketing platform, your company and its brands need to have a strong online presence. Successful online strategies incorporate both a defensive and offensive element: carve our your company's online presence whilst also minimizing the opportunity for squatters to interject their message using your brand. But squatters are resourceful and can find loopholes to take advantage of your brand's popularity. And in our experience, this is an issue that is not reserved to the Nike's of the world. In the event that your brand does become a squatter target, domain name dispute resolution procedures are effective, efficient and cost effective tools that are at your disposal.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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