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WHAT'S IN A DOMAIN NAME?
Prepared By Timothy C. Platnich

The content of this article is intended to be informational only. We caution you against using or relying upon any information contained in this article without first seeking legal advice regarding your particular matter. All matters arising from the use of our website, including this article, shall be governed by Alberta law and shall be within the exclusive jurisdiction of the courts of Alberta.

So you have registered a domain name, what do you own?

Registering a domain name, gives you the right, in the first instance, to the domain name. The right is exclusive in the sense that only one person (in the legal sense which includes corporations, partnerships, trusts, etc.) can hold a registered domain name. Once you are successful in registering the name, it is to the exclusion of others.

Having a registered domain name does not however mean that you have a right to use or protect the name. Use of a registered domain name may still constitute a breach of a trademark or may constitute the tort of "passing off". Generally this may occur where your use of a domain name takes advantage of the tradename or goodwill of another person. 

In obtaining a domain name for use in your business, it would be prudent to conduct searches to determine whether the use of the domain name may constitute a breach of a trademark or passing off.

Domain names may be acquired generally for 2 reasons: for use as a link to a website; and for resale. It is more likely in the first case that you may run afoul of someone's trademark or tradename. In the second case it is arguable that you are not making use of the trademark and therefore are not infringing a trademark. There are recent cases however that suggest that the holder of a trademark will also have the right to the corresponding domain name. Based on this line of cases, you as the registered holder of a domain name could be legally forced to transfer the domain name to the holder of the corresponding trademark. These cases appear to be a reaction to domain name opportunists who register domain names corresponding to well-known trademarks with the intent of reselling the domain names to the trademark holder at an excessive profit.  This latter situation is to be distinguished from the case where a person acquires a domain name for legitimate use in that person's business and the domain name turns out to be valuable to another person. An infamous example of this situation was the acquisition and ultimate sale of the domain name "pga.com" by the Potato Grower's Association to the Professional Golf Association.

The mere registration of a domain name may not give you any right to use the name. Further, the registration of a domain name may not protect any goodwill that you develop in respect of the name. It is still recommended that traditional approaches be taken in selecting, using and protecting tradenames even where the tradename is a domain name.

For further information about intellectual property, please do not hesitate to contact us.

This paper was prepared by Tim Platnich.

 


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