Regardless of the nature of your business – whether it’s a traditional bricks and mortar enterprise, a not-for-profit organization, or an e-commerce store – your domain name is a critical component of your brand.
Good domain names are memorable and lend instant credibility to your business. They help prospective customers find you online easily, and make it possible for them to purchase your products and services from any of their devices, wherever they happen to be.
We’ve covered the ins and outs of domain name selection extensively in our recent e-book, The Ultimate Guide to Choosing a Domain Name. But there’s one extremely important aspect of selecting a domain name that many people often overlook, and that’s whether you have a legal right to register and use it.
In fact, one of the riskiest things you can do with a domain name is to assume that you have a right to use it. If you go ahead and register a domain name that inadvertently infringes on the legal rights of another business or individual, there could be serious legal consequences.
Doing your legal due diligence
While there’s a good chance your domain is available and doesn’t infringe on anyone else’s rights, the only way to determine that for sure is to do some preliminary research.
Lawyer Zak Muscovitch, the principal at DNattorney.com and a recognized expert in Canadian and International domain name law, recommends that you take the time to do your due diligence so you can make an informed decision.
The first step in this process is to search the Canadian Trademarks Database. Managed by the Canadian Intellectual Property Office (CIPO), this database allows you to search for your business and domain names to see if they match any trademarks already registered in Canada.
Another preliminary search Muscovitch recommends is a NUANS search. This search lets you compare your proposed business or domain name with existing corporate names and trademarks in Canada and provides you with a listing of any business names that are similar to the name you’re searching for.
On the surface, conducting these searches seems relatively simple. However, interpreting the results in the context of intellectual property law is not always straightforward. So you may want to consider hiring an intellectual property lawyer to conduct your searches for you and advise you on the legal implications of the results.
As Muscovich points out, where domain names are concerned “what may seem like a problem to you may not be a problem at all, and what doesn’t appear to be a problem could turn out to be a serious one.”
What to do if you think someone is using your domain name in bad faith
Once you’ve chosen and registered your domain name, another potential challenge you could face is the possibility that another business or individual may have registered a domain that’s similar to yours in “bad faith”.
There are several reasons someone might do this. For example, they may want to prevent you from registering the domain, or they may intend to sell or lease the domain to someone else for much more money than it’s worth. They may also have registered the domain to intentionally disrupt your business or to attract Internet traffic to a website that looks like yours for their own commercial gain.
If you believe that someone has registered a domain in bad faith, there are two ways to go about taking action.
For more complex cases, you can hire a lawyer to bring a trademark infringement case against the person or business who is attempting to pass themselves off as you or your business. The downside of this approach is that it could take a long time to resolve and could also result in significant legal fees.
Another option, which is open to you if you have a .CA domain, is to take advantage of the CIRA domain name dispute resolution process (CDRP). For clear-cut cases of bad faith registration of .CA domains, the CDRP provides an alternative to the court system and offers businesses and individuals a mechanism for obtaining quick, out-of-court decisions at relatively low costs.
The CIRA Domain Name Dispute Resolution Policy describes the nature of the dispute resolution process, the requirements for those who wish to initiate a proceeding, and the types of bad faith registrations covered. It also sets out the procedures to initiate and respond to a proceeding.
For more information on using the CDRP to resolve a domain name dispute, visit the CDRP process and decisions page on our website.
Registering a good domain name (or multiple domain names) is an important step when starting your business and building its online presence. Taking note of some legal considerations can save future headaches and ensure your business takes off on firm legal ground.