Canadian telephone numbers are public and are therefore available to telemarketing companies.
You may wish to register all of your telephone numbers or extend the expiry date (if you already registered your numbers in 2010) on the national "Do Not Call List".
HOWEVER, cellular telephone numbers, by law, are not public information.
The way the system in Canada works is that telemarketers are required to compare their telephone lists with the Do Not Call List ("DNCL"), and by law must remove all numbers that are on the DNCL. The issue is that as of yet, there have been little consequences, and the penalties issued inconsequential to large telemarketing companies. The problem is that the DNCL is a list of validated telephone numbers. If you put your cell phone number on the list, you have just validated your number, and made it available to telemarketers how must compare their lists to the DNCL. Since the consequences are not serious, it is an economically viable decision to take the risk and use the DNCL as the calling list.
If you really want to keep your cell phone numbers private DO NOT add them to the DNCL.
The DNCL can be found at: https://www.lnnte-dncl.gc.ca/insnum-regnum-eng
**********
Les numéros de téléphone canadiens sont publics et donc disponibles aux compagnies télémercatiques.
Vous pouvez enregistrer tous vos numéros de téléphone canadiens (ou prolonger la date d'expiration d'un tel enregistrement si vous avez déjà enregistre vos numéros en 2010) sur la Liste nationale de numéros de télécommunication exclus. ("LNNTE").
PAR CONTRE, les numéros de téléphone cellulaires ne sont pas publics, de par la loi.
Le fonctionnement du système canadien requiert que les compagnies télémercatiques comparent les listes en leur possession à la LNNTE, et doivent supprimer les numéros y figurant de leur liste.
Un problème est qu'à date, il n'y a pas eu de conséquences importantes, et les amendes imposées sont minimes et ne servent pas à décourager les appels aux numéros figurants sur la LNNTE.
L'autre aspect important du problème est que la LNNTE est une liste de numéros validés. Si vous inscrivez votre numéro de téléphone cellulaire sur cette liste, vous venez de valider votre numéro et le rendre disponible aux compagnies télémercatiques lorsqu'ils comparent leurs listes à la LNNTE.
Vu que les conséquences d'un tel comportement ne sont pas encore sérieux, c'est une décision malheureusement économiquement viable d'utiliser la LNNTE contrairement à son intention originale.
Si vous voulez préserver le caractère confidentiel de votre numéro de téléphone cellulaire NE L'INSCRIVEZ pas sur la LNNTE.
La LNNTE se retrouve au : https://www.lnnte-dncl.gc.ca/insnum-regnum-fra
Monday, August 29, 2011
Friday, March 19, 2010
The Doctrine of Forum Non Conveniens: Canada and the United States Compared
I am pleased to announce the publication of a new article: "The Doctrine of Forum Non Conveniens: Canada and the United States Compared" by F. Mikis Manolis, Nathaly J. Vermette and Robert F. Hungerford published in the Federation of Defence and Corporate Counsel law journal the FDCC QUARTERLY.
Saturday, January 30, 2010
"VIVE LA DIFFÉRENCE" - The Province of Québec, the Civil Code and Trade-mark Issues – a Brief Outline of Some Differences
Québec’s legal system has a very interesting cultural and legal history in that both were heavily influenced by a combination of the French custom of written law and the British tradition of oral and case law. Originally a territory belonging to the French Crown, Québec’s local authorities adopted in 1664 the “Coutume de Paris” as the main body of law governing the French settlement of “La Nouvelle France”. These customs were complemented by local customs, canon law and royal edicts. With the British influence arriving in North America and their victory over the French in Nouvelle France, British law was imposed on the territory. However, a short time later, the British allowed the French population to carry on with their language, religion and laws for civil matters, and thus the systems of French “civil law” and British “Common Law” began to co-exist in the same territory.
The of law of La Nouvelle France (or then under its newer name of “Lower-Canada”) remained a somewhat informal body of customs until the adoption of its first official codification in 1866 under the name of the Civil Code of Lower Canada – C.c.L-C., which was influenced by the French Napoleonic Code of 1804, the Louisiana Civil Code and some British common law. The Civil Code of Lower Canada consolidated these different sources and created a body of law that was more suited to the local society. As the C.c.L-C. evolved over the years it was modified several times and influenced by various factors including new social, economic and political realities in Québec as well as globalization. The C.c.L-C. continues to evolve with the last major modification having been adopted on January 1, 1994 and set out in the new Québec Civil Code.
The Quebec civil law system is therefore based on written law. The concepts are somewhat static and cases must look to the law to interpret the rules and find a solution to the problems set before the courts. Conversely, the “Common Law” system is founded on the resolution of situations where the of rule law has always existed, but is in constant process of being “discovered”. This body of law consists of the compilation of solutions consecrated in judgements and gathered over time. It is from this constantly evolving body of law that solutions are found to resolve issues.
As the rest of the Canadian territory matured and developed its body of laws under the British traditions, Québec maintained its ties with the French civil tradition. Even as the nation of Canada was officially born in 1865 with the adoption its Constitution, the province of Québec maintained the pluralist nature of its legal system. The Canadian Constitution formalised agreements between the provinces and created a central federal system, dividing legislative powers by granting exclusive jurisdiction to the provincial authorities over various domains, most notably over civil matters. We therefore find in the province of Québec a body of civil laws governing certain aspects of the law, a body of provincial statutory provisions complimented by the civil law, and a body of federal laws steeped in English Common Law traditions.
It is not unusual therefore that a Québec court takes a different approach to the interpretation of a federal statute when the law provides little or no guidance. Since the supplemental or complimentary legislative body used to interpret federal statutes is the Québec Civil Code rather than the Common Law as in other provinces, Québec judges will turn first to the Civil code, and case law, whereas a judge in other Canadian provinces will turn to case law to assist in the interpretation.
These fundamental philosophical differences create various situations where, although the end results may be similar, the means of reaching such solutions may vary.
For example, Québec law, as it pertains to trade-marks contains a number of differences, for example, as it relates to the Common Law tort of “passing off”.
If an action were taken in a Québec provincial court, regardless whether the Canadian federal Trade-mark’s Act applies, the Québec Civil Code would find application as well as the body of procedural law based on the Québec Code of Civil Procedure.
Since the tort of “passing off” is a creature of “common law”, and does not exist in civil law, we would turn to the Québec civil code to find a “legal fit”. The remedy in Quebec law would be a concept called “concurrence déloyale”, literally translated as “unfair competition”. Care must however be taken in that it is not the common law concept of “unfair competition” but a French based civil law concept that has a wider range of remedies. It is based in the general “fault” of civil responsibility. These differences have repercussions on how a case is handled, and the possible outcome.
Another major difference with Québec law is the province’s constitutional right to protect its culture and language. To this effect, there is a statute pertaining to the French language that has impacted many marketing campaigns and trade-mark portfolio strategies.
The Charter of the French Language – Rules and Exceptions:
In the province of Québec the use of language in commerce is regulated by the Charter of the French Language (R.S.Q., c. C-11) (the “Charter”).
Section 51 of the Charter establishes the general rule with respect to product labeling stating that inscriptions on products must be in the French language:
“51. Every inscription on a product, on its container or on its wrapping, or on a document or object supplied with it, including the directions for use and the warranty certificates, must be drafted in French. This rule applies also to menus and wine lists.
Other languages.
The French inscription may be accompanied with a translation or translations, but no inscription in another language may be given greater prominence than that in French.”
1977, c. 5, s. 51; 1997, c. 24, s. 24.
There are exceptions to this rule, and of course the requisite exceptions to the exceptions.
Without going into a full analysis of this issue, suffice it to say that there exists legislation unique to the province of Québec that often requires the intervention of specialized Québec legal counsel.
The of law of La Nouvelle France (or then under its newer name of “Lower-Canada”) remained a somewhat informal body of customs until the adoption of its first official codification in 1866 under the name of the Civil Code of Lower Canada – C.c.L-C., which was influenced by the French Napoleonic Code of 1804, the Louisiana Civil Code and some British common law. The Civil Code of Lower Canada consolidated these different sources and created a body of law that was more suited to the local society. As the C.c.L-C. evolved over the years it was modified several times and influenced by various factors including new social, economic and political realities in Québec as well as globalization. The C.c.L-C. continues to evolve with the last major modification having been adopted on January 1, 1994 and set out in the new Québec Civil Code.
The Quebec civil law system is therefore based on written law. The concepts are somewhat static and cases must look to the law to interpret the rules and find a solution to the problems set before the courts. Conversely, the “Common Law” system is founded on the resolution of situations where the of rule law has always existed, but is in constant process of being “discovered”. This body of law consists of the compilation of solutions consecrated in judgements and gathered over time. It is from this constantly evolving body of law that solutions are found to resolve issues.
As the rest of the Canadian territory matured and developed its body of laws under the British traditions, Québec maintained its ties with the French civil tradition. Even as the nation of Canada was officially born in 1865 with the adoption its Constitution, the province of Québec maintained the pluralist nature of its legal system. The Canadian Constitution formalised agreements between the provinces and created a central federal system, dividing legislative powers by granting exclusive jurisdiction to the provincial authorities over various domains, most notably over civil matters. We therefore find in the province of Québec a body of civil laws governing certain aspects of the law, a body of provincial statutory provisions complimented by the civil law, and a body of federal laws steeped in English Common Law traditions.
It is not unusual therefore that a Québec court takes a different approach to the interpretation of a federal statute when the law provides little or no guidance. Since the supplemental or complimentary legislative body used to interpret federal statutes is the Québec Civil Code rather than the Common Law as in other provinces, Québec judges will turn first to the Civil code, and case law, whereas a judge in other Canadian provinces will turn to case law to assist in the interpretation.
These fundamental philosophical differences create various situations where, although the end results may be similar, the means of reaching such solutions may vary.
For example, Québec law, as it pertains to trade-marks contains a number of differences, for example, as it relates to the Common Law tort of “passing off”.
If an action were taken in a Québec provincial court, regardless whether the Canadian federal Trade-mark’s Act applies, the Québec Civil Code would find application as well as the body of procedural law based on the Québec Code of Civil Procedure.
Since the tort of “passing off” is a creature of “common law”, and does not exist in civil law, we would turn to the Québec civil code to find a “legal fit”. The remedy in Quebec law would be a concept called “concurrence déloyale”, literally translated as “unfair competition”. Care must however be taken in that it is not the common law concept of “unfair competition” but a French based civil law concept that has a wider range of remedies. It is based in the general “fault” of civil responsibility. These differences have repercussions on how a case is handled, and the possible outcome.
Another major difference with Québec law is the province’s constitutional right to protect its culture and language. To this effect, there is a statute pertaining to the French language that has impacted many marketing campaigns and trade-mark portfolio strategies.
The Charter of the French Language – Rules and Exceptions:
In the province of Québec the use of language in commerce is regulated by the Charter of the French Language (R.S.Q., c. C-11) (the “Charter”).
Section 51 of the Charter establishes the general rule with respect to product labeling stating that inscriptions on products must be in the French language:
“51. Every inscription on a product, on its container or on its wrapping, or on a document or object supplied with it, including the directions for use and the warranty certificates, must be drafted in French. This rule applies also to menus and wine lists.
Other languages.
The French inscription may be accompanied with a translation or translations, but no inscription in another language may be given greater prominence than that in French.”
1977, c. 5, s. 51; 1997, c. 24, s. 24.
There are exceptions to this rule, and of course the requisite exceptions to the exceptions.
Without going into a full analysis of this issue, suffice it to say that there exists legislation unique to the province of Québec that often requires the intervention of specialized Québec legal counsel.
Thursday, August 27, 2009
Fraudulent Trademark Registration & Renewal Notices & Solicitations
Fraudulent Trade-mark Registration Solicitations
IMPORTANT NOTICE – NON SOLICITED SERVICES
Do not answer these solicitations and throw them away.
There exist numerous domestic and foreign enterprises that monitor the trade-mark registers for pending applications and registered trade-marks around the world and solicit business by sending invoices to trade-mark owners for poorly detailed “services”.
The problem of fraudulent solicitations has become so pervasive, that the Canadian Intellectual Property Office (CIPO) and the Madrid System for the International Registration of Marks published the following cautionary notices on their respective websites:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00050.html :
"Warning: Non-solicited invoices relating to trade-mark registration applications
The Canadian Intellectual Property Office (CIPO) has learned that certain companies are soliciting payment for Canadian trade-mark registration applications that were in fact not requested."
IMPORTANT NOTICE – NON SOLICITED SERVICES
Do not answer these solicitations and throw them away.
There exist numerous domestic and foreign enterprises that monitor the trade-mark registers for pending applications and registered trade-marks around the world and solicit business by sending invoices to trade-mark owners for poorly detailed “services”.
The problem of fraudulent solicitations has become so pervasive, that the Canadian Intellectual Property Office (CIPO) and the Madrid System for the International Registration of Marks published the following cautionary notices on their respective websites:
http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00050.html :
"Warning: Non-solicited invoices relating to trade-mark registration applications
The Canadian Intellectual Property Office (CIPO) has learned that certain companies are soliciting payment for Canadian trade-mark registration applications that were in fact not requested."
If you receive an invoice relating to an application filed with the Trade-marks Office sent by an entity other than CIPO or your agent, please contact either the Client Service Centre at 1-866-997-1936 (or at 819-934-0554 for international calls) or your agent before responding to it.
http://www.wipo.int/madrid/en :
"Warning: On several occasions, the attention of the International Bureau has been drawn to the fact that certain organizations are sending letters to the owners of international registrations, inviting them to register their marks in publications which appear to be of an official nature. The International Bureau warns the owners of international registrations and their agents that such a publication has absolutely no legal effect in regard to the protection of the said marks and is therefore unnecessary."
The only communications that are relevant to your Canadian trade-mark registration(s) are those emanating from the Canadian Intellectual Property Office (CIPO) or your Canadian trade-mark agent."
If you receive an invoice or a communication relating to your trade-mark from an entity other than CIPO or your trade-mark agent and are not sure what to do, please communicate with me prior to responding.
Below are examples of solicitations for publication “services” of trade-marks that have no added value. Do not answer these solicitations and throw them away.
CPI
i Support Net
IDM - International Data Medium Anstalt
Patent Trademark Register
Trademark Info Corp
Trademark Safeguard - Monitoring Service
United States Trademark Centre
United States Trademark Protection Agency
United States Trademark Renewal Service
For information on Domain name slamming read this excellent post:
http://blog.webnames.ca/cgi-bin/mt/mt-search.cgi?search=domain+slamming
Thursday, August 20, 2009
DOT TEL: A New Type of Domain Name
By Nathaly J. Vermette - August 20, 2009
EASY & FAST ....TRY IT TODAY ! CLICK HERE TO REGISTER NOW
WHAT IS .TEL?
The “dot.tel” or “.tel” domain is relatively new general Top Level Domain (gTLD) that is administered by Telnic (http://www.telnic.com/) and it is not a regular domain. This domain does not point to a regular web page, but to a contact detail listing that is inputted by the registrant. These entries create a new virtual worldwide phone book that is updated in real time. See the Bloomberg interview where the concept is clearly explained: http://www.telnic.com/tel-bloomberg.html . (Other interviews with CNBC, CNN can be found at : http://www.telnic.com/tel-interviews.html )
The http://www.canadiantmlaw.tel/ , is just an example of how it is used on an individual or business basis.
For businesses, the possibilities are greater, and more applications will be developed. The .tel rush has only just begun, and we are at the forefront of a new communications method. Business applications will be rolling out shortly.
I attended the Dot-Tel Camp Toronto-1 Saturday, August 15th, 2009 at the Royal Ontario Museum (ROM) and spoke about Canadian trade-mark law and domain names, and learned how this new gTLD will be used through new applications.
HOW DO I USE .TEL ?
Among the applications that I have since learned about, there are two that stand out that really illustrate the strength of the .tel domain name:
For Blackberry®: Go to http://www.hornethub.com/ or http://www.hornet.tel/ (will be in the app store hopefully in a month or 2) and download the HORNET application.
For iPhone®: Go to the application store and download SUPERBOOK
Once installed, look up CanadianTMLaw.tel . You will have all of my business contact information that can be saved directly to your contacts in your phone. Imagine how this can be useful for your contact information.
WHY .TEL ?
The strength of these applications lies in the fact that you can save the contact details directly to your phone without having to input them manually. In addition, once on the contact page, your phone can make the phone call, or open the page to send an email, or SMS immediately.
Secondly, this domain easily updates in seconds with various applications such as MyDotTel, eliminating the need to call your webmaster to make changes to your website. This is especially useful when employee directories need to be updated on a regular basis. You can simply link your web sites’ contact page to your .tel domain and keep your contact information up to date to the minute.
Thirdly, for frequent business travellers, the application can also have several profiles that can be updated instantaneously to let your customers and business partners know who and where to reach you.
Finally, for small businesses who do not want to have a webpage, this method provides them witha quick and cost effective web presence.
More applications are being developed as you read this and will roll out shortly.
I think that trademark owners and companies should register their .tel domain name in order to participate in this worldwide directory now, before someone else registers the names.
Here is a brochure that explains why businesses should sign up: http://telnic.org/brochures/top10/Top10ReasonsToBuy.pdf
I hope this is helpful. Please feel free to call me should you have any questions relating to this subject matter.
Nathaly
P.S.: a cute video for more personal applications (if you have a few minutes for a smile) http://telnic.com/ Enjoy !
Find me at http://www.canadiantmlaw.tel/ !
SIMPLE TO REGISTER YOUR .TEL DOMAIN
DO IT NOW !!! GO TO : http://vermette.registertel.com
EASY & FAST ....TRY IT TODAY ! CLICK HERE TO REGISTER NOW
WHAT IS .TEL?
The “dot.tel” or “.tel” domain is relatively new general Top Level Domain (gTLD) that is administered by Telnic (http://www.telnic.com/) and it is not a regular domain. This domain does not point to a regular web page, but to a contact detail listing that is inputted by the registrant. These entries create a new virtual worldwide phone book that is updated in real time. See the Bloomberg interview where the concept is clearly explained: http://www.telnic.com/tel-bloomberg.html . (Other interviews with CNBC, CNN can be found at : http://www.telnic.com/tel-interviews.html )
The http://www.canadiantmlaw.tel/ , is just an example of how it is used on an individual or business basis.
For businesses, the possibilities are greater, and more applications will be developed. The .tel rush has only just begun, and we are at the forefront of a new communications method. Business applications will be rolling out shortly.
I attended the Dot-Tel Camp Toronto-1 Saturday, August 15th, 2009 at the Royal Ontario Museum (ROM) and spoke about Canadian trade-mark law and domain names, and learned how this new gTLD will be used through new applications.
HOW DO I USE .TEL ?
Among the applications that I have since learned about, there are two that stand out that really illustrate the strength of the .tel domain name:
For Blackberry®: Go to http://www.hornethub.com/ or http://www.hornet.tel/ (will be in the app store hopefully in a month or 2) and download the HORNET application.
For iPhone®: Go to the application store and download SUPERBOOK
Once installed, look up CanadianTMLaw.tel . You will have all of my business contact information that can be saved directly to your contacts in your phone. Imagine how this can be useful for your contact information.
WHY .TEL ?
The strength of these applications lies in the fact that you can save the contact details directly to your phone without having to input them manually. In addition, once on the contact page, your phone can make the phone call, or open the page to send an email, or SMS immediately.
Secondly, this domain easily updates in seconds with various applications such as MyDotTel, eliminating the need to call your webmaster to make changes to your website. This is especially useful when employee directories need to be updated on a regular basis. You can simply link your web sites’ contact page to your .tel domain and keep your contact information up to date to the minute.
Thirdly, for frequent business travellers, the application can also have several profiles that can be updated instantaneously to let your customers and business partners know who and where to reach you.
Finally, for small businesses who do not want to have a webpage, this method provides them witha quick and cost effective web presence.
More applications are being developed as you read this and will roll out shortly.
I think that trademark owners and companies should register their .tel domain name in order to participate in this worldwide directory now, before someone else registers the names.
Here is a brochure that explains why businesses should sign up: http://telnic.org/brochures/top10/Top10ReasonsToBuy.pdf
I hope this is helpful. Please feel free to call me should you have any questions relating to this subject matter.
Nathaly
P.S.: a cute video for more personal applications (if you have a few minutes for a smile) http://telnic.com/ Enjoy !
Find me at http://www.canadiantmlaw.tel/ !
SIMPLE TO REGISTER YOUR .TEL DOMAIN
DO IT NOW !!! GO TO : http://vermette.registertel.com
Domain Names & Trade-marks 101 – An Introduction
Domain Names & Trade-marks 101 – An Introduction
By Nathaly J. Vermette – August 20th, 2009
Internet domain names – a relatively recent breed of commercial identifiers – have become so pervasive in the realm of business that pressing questions have been raised as to their legal nature and status. As businesses world-wide embrace the cyber marketplace and participate in e-commerce, the use of domain names gives rise to an ever-greater number of conflicts.
What is a domain name?
No matter how high-tech and fast the internet may be, it cannot escape the common denominator of any communication system – every system must have designating co-ordinates enabling users to address a message to a given recipient. To make the system practical, these identifying co-ordinates must be easily remembered. On the internet, these identifying co-ordinates are called “domain names”.
A domain name is an electronic address on the Internet where a web site or page can be readily found.
Domain names are the distinctive part of an electronic address that correspond to a unique numeric address that computers can read and by which they identify themselves. These addresses are the gateways to internet sites and allow people to visit a site with a particular address. Each computer or server has a unique identifying address called an Internet Protocol (IP) address.
An IP address is a long string of numbers such as “105.154.98.452”, and are similar to a telephone number. These numeric addresses have no particular significance other than their function as an addresses and, as a result, they are difficult to remember. Domain names are words that are assigned to these numbers (or IP addresses) and translate these numbers into more easily remembered names or words that are used to get from site to site, and make the Internet more user-friendly.
For this translation system to work, it was necessary to co-ordinate and organize the conversions of the numeric addresses into names or words. For example the numeric address “105.154.98.452” was transformed into “microsoft.com”. A registration and administration system was therefore created.
It is important to note that since each computer has a unique numeric address, the attribution of a word corresponding to such address must also be unique. At this point, we begin to see the first sign of a conflict with trade-marks.
The name attribution system is structured according to a hierarchy. At the summit are the generic top level domain names (“gTLD’s”) and the country code top level domain name (“ccTLD”). A few examples of gTLD’s are:
.edu = educational institution
By Nathaly J. Vermette – August 20th, 2009
Internet domain names – a relatively recent breed of commercial identifiers – have become so pervasive in the realm of business that pressing questions have been raised as to their legal nature and status. As businesses world-wide embrace the cyber marketplace and participate in e-commerce, the use of domain names gives rise to an ever-greater number of conflicts.
What is a domain name?
No matter how high-tech and fast the internet may be, it cannot escape the common denominator of any communication system – every system must have designating co-ordinates enabling users to address a message to a given recipient. To make the system practical, these identifying co-ordinates must be easily remembered. On the internet, these identifying co-ordinates are called “domain names”.
A domain name is an electronic address on the Internet where a web site or page can be readily found.
Domain names are the distinctive part of an electronic address that correspond to a unique numeric address that computers can read and by which they identify themselves. These addresses are the gateways to internet sites and allow people to visit a site with a particular address. Each computer or server has a unique identifying address called an Internet Protocol (IP) address.
An IP address is a long string of numbers such as “105.154.98.452”, and are similar to a telephone number. These numeric addresses have no particular significance other than their function as an addresses and, as a result, they are difficult to remember. Domain names are words that are assigned to these numbers (or IP addresses) and translate these numbers into more easily remembered names or words that are used to get from site to site, and make the Internet more user-friendly.
For this translation system to work, it was necessary to co-ordinate and organize the conversions of the numeric addresses into names or words. For example the numeric address “105.154.98.452” was transformed into “microsoft.com”. A registration and administration system was therefore created.
It is important to note that since each computer has a unique numeric address, the attribution of a word corresponding to such address must also be unique. At this point, we begin to see the first sign of a conflict with trade-marks.
The name attribution system is structured according to a hierarchy. At the summit are the generic top level domain names (“gTLD’s”) and the country code top level domain name (“ccTLD”). A few examples of gTLD’s are:
.edu = educational institution
.gov = U.S. government office
.mil = U.S. military forces
.mil = U.S. military forces
.com = commercial organization
.net = internet service provider
.net = internet service provider
.org = non profit organization
.int = international organization
.int = international organization
.biz = businesses
.tel = communication coordinates information
Each country has its own code, and the registration of names with these codes is relegated to an authority appointed by each country. Some examples of country codes are:
.au = Australia
Each country has its own code, and the registration of names with these codes is relegated to an authority appointed by each country. Some examples of country codes are:
.au = Australia
.ca = Canada
.ch - China
.eg = Egypt
.gr = Germany
.gr = Germany
.ie = Ireland
.il = Israel
.jp = Japan
.jp = Japan
.nz = New Zealand
.us = United States
It is the individual domain name, with up to twenty-two characters, that poses the most fundamental problem with respect to trademarks, as it is this part of the domain name that is arbitrarily chosen by the person registering it.
Because each computer has a unique numeric address, the name chosen to replace the numeric address must also be unique. Nobody else can use that word in the given top-level domain name. A problem arises when someone registers a word as a domain name that is someone else’s trademark. The trademark holder is thereafter blocked from registering a domain name which corresponds to his trademark.
This conflict is possible because the choice and registration of domain names is not subject to any formal regulation. The “right” to a domain name is established on a first-come first-served basis by a simple registration process. However, contrary to statutory trademarks, the mere registration of a domain name does not vest the registrant with legal rights to that name except perhaps common law rights. As such, common law and statutory trademark rights are established through use, registration being necessary to create a presumption of use and to obtain enhanced statutory protection in a given legislative territory. This raises the issue as to whether the use of a domain name constitutes use for the purposes of trademark protection.
Conflicts between domain names and pre-existing trademark rights arise from the combination of the similarities and differences in their respective functions. The similarities pertain to the fact that they are both a point of visibility for a business entity; one in the physical world, the other in cyberspace.
When a trademark holder wishes to establish himself on the internet, s/he is sometimes confronted with the fact that someone has registered a domain name using his mark. Sometimes the registration is deliberately made to try to take advantage of an established goodwill; other times, the domain name holder has a legitimate right and claim to the name.
A domain name holder will have a legitimate claim either because s/he too holds or uses a similar mark for a product or service in a totally different sector of business, and/or because their trademark is registered or used in a different legislative territory. The latter type of conflict occurs more frequently within “international” or generic top level domains and especially the “.com” TLD which has no geographic limitations. Hence, the holder of a U.S. trademark may be confronted with the fact that his valid American trademark has been registered as a “.com” domain name by a holder of an equally valid Canadian trademark. In cases like this, practical business solutions must be found as the law provides none.
One possible legal solution that currently exists relates to the notion of the “famous trademark” found in the international trademark protection treaties and anti-dilution legislation and common law principles. If a mark is famous, other countries party to the treaty agree to prevent registration or use of the mark in their jurisdiction. This may be a potential solution for the future, but unless an international consensus of what constitutes a famous mark is reached and an agreement as to the sanctions and remedies is established, this notion is of little help to us at the moment.
The conflicts between trademarks and domain names began with the first-come-first-served registration process of domain names. At first, there was no formal international pre-registration verification process for domain names. Now, there are Sunrise periods where trademark owners can pre-register domain names corresponding to their trademarks provided they file evidence of their trademarks rights.
In the March of 2009, ICANN formed the Implementation Recommendation Team (the ‘”IRT”) to “(...) seek solutions for potential risks to trademark holders in the implementation of new gTLD’s. The IRT tabled a report in July 2009 with several recommendations, namely:
The creation of an centralized IP Clearinghouse where prior to registering a domain name, all registrars would have to clear the new domain name against a list of intellectual property rights registered by trademarks owners directly before authorizing the registration of the domain name;
The creation of a Globally Protected Marks List (GPML) to protect trademarks that are considered to be global registrations (according to criteria yet to be set);
Top Level Rights Protection Mechanisms (RPM) that would cross reference the GPML with domain name registration applications for identical or confusingly similar trademarks
Second Level Rights Protection Mechanisms that would extend protection to the second level
Standard Sunrise Registration Processes that would allow an owner of a nationally registered trademark to preregister a domain name before the process is opened to the public.
Draft Uniform Rapid Suspension System (URS) that would require new
How can I obtain a domain name?
Domain names are usually assigned on a first-come, first-serve basis and are registered with an accredited registrar for the domain name you want. The registrar will then conduct a domain name search to see if the name sought is already taken through a “WHOIS” search. Such searches can be conducted at http://networksolutions.com/whois/index.jsp, or at any accredited registrar’s web site.
Prior to 1999, Network Solutions, Inc. (NSI) was the sole registrar for domain names. Today, there are numerous registrars, all of whom work with the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a non-profit entity that manages and coordinates domain name registration to ensure that every address is unique and that all domain names map to the correct IP address.
It is the individual domain name, with up to twenty-two characters, that poses the most fundamental problem with respect to trademarks, as it is this part of the domain name that is arbitrarily chosen by the person registering it.
Because each computer has a unique numeric address, the name chosen to replace the numeric address must also be unique. Nobody else can use that word in the given top-level domain name. A problem arises when someone registers a word as a domain name that is someone else’s trademark. The trademark holder is thereafter blocked from registering a domain name which corresponds to his trademark.
This conflict is possible because the choice and registration of domain names is not subject to any formal regulation. The “right” to a domain name is established on a first-come first-served basis by a simple registration process. However, contrary to statutory trademarks, the mere registration of a domain name does not vest the registrant with legal rights to that name except perhaps common law rights. As such, common law and statutory trademark rights are established through use, registration being necessary to create a presumption of use and to obtain enhanced statutory protection in a given legislative territory. This raises the issue as to whether the use of a domain name constitutes use for the purposes of trademark protection.
Conflicts between domain names and pre-existing trademark rights arise from the combination of the similarities and differences in their respective functions. The similarities pertain to the fact that they are both a point of visibility for a business entity; one in the physical world, the other in cyberspace.
When a trademark holder wishes to establish himself on the internet, s/he is sometimes confronted with the fact that someone has registered a domain name using his mark. Sometimes the registration is deliberately made to try to take advantage of an established goodwill; other times, the domain name holder has a legitimate right and claim to the name.
A domain name holder will have a legitimate claim either because s/he too holds or uses a similar mark for a product or service in a totally different sector of business, and/or because their trademark is registered or used in a different legislative territory. The latter type of conflict occurs more frequently within “international” or generic top level domains and especially the “.com” TLD which has no geographic limitations. Hence, the holder of a U.S. trademark may be confronted with the fact that his valid American trademark has been registered as a “.com” domain name by a holder of an equally valid Canadian trademark. In cases like this, practical business solutions must be found as the law provides none.
One possible legal solution that currently exists relates to the notion of the “famous trademark” found in the international trademark protection treaties and anti-dilution legislation and common law principles. If a mark is famous, other countries party to the treaty agree to prevent registration or use of the mark in their jurisdiction. This may be a potential solution for the future, but unless an international consensus of what constitutes a famous mark is reached and an agreement as to the sanctions and remedies is established, this notion is of little help to us at the moment.
The conflicts between trademarks and domain names began with the first-come-first-served registration process of domain names. At first, there was no formal international pre-registration verification process for domain names. Now, there are Sunrise periods where trademark owners can pre-register domain names corresponding to their trademarks provided they file evidence of their trademarks rights.
In the March of 2009, ICANN formed the Implementation Recommendation Team (the ‘”IRT”) to “(...) seek solutions for potential risks to trademark holders in the implementation of new gTLD’s. The IRT tabled a report in July 2009 with several recommendations, namely:
The creation of an centralized IP Clearinghouse where prior to registering a domain name, all registrars would have to clear the new domain name against a list of intellectual property rights registered by trademarks owners directly before authorizing the registration of the domain name;
The creation of a Globally Protected Marks List (GPML) to protect trademarks that are considered to be global registrations (according to criteria yet to be set);
Top Level Rights Protection Mechanisms (RPM) that would cross reference the GPML with domain name registration applications for identical or confusingly similar trademarks
Second Level Rights Protection Mechanisms that would extend protection to the second level
Standard Sunrise Registration Processes that would allow an owner of a nationally registered trademark to preregister a domain name before the process is opened to the public.
Draft Uniform Rapid Suspension System (URS) that would require new
How can I obtain a domain name?
Domain names are usually assigned on a first-come, first-serve basis and are registered with an accredited registrar for the domain name you want. The registrar will then conduct a domain name search to see if the name sought is already taken through a “WHOIS” search. Such searches can be conducted at http://networksolutions.com/whois/index.jsp, or at any accredited registrar’s web site.
Prior to 1999, Network Solutions, Inc. (NSI) was the sole registrar for domain names. Today, there are numerous registrars, all of whom work with the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a non-profit entity that manages and coordinates domain name registration to ensure that every address is unique and that all domain names map to the correct IP address.
Stay tuned for the next posts on:
"DOT TEL" and
What to do if your domain name is taken.
Nathaly J. Vermette, LL.B., LL.M.
Attorney & Trade-mark Agent
njv@vermettelaw.com
1550 Metcalfe, Suite 800
Montréal, Québec
H3A 1X6
Canada
Direct telephone: (514) 499-7444
http://www.vermettelaw.com/
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