Thursday, August 27, 2009

Fraudulent Trademark Registration & Renewal Notices & Solicitations

Fraudulent Trade-mark Registration Solicitations

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: :
"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. :
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.

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:

Thursday, August 20, 2009

DOT TEL: A New Type of Domain Name

By Nathaly J. Vermette - August 20, 2009



The “” or “.tel” domain is relatively new general Top Level Domain (gTLD) that is administered by Telnic ( 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: . (Other interviews with CNBC, CNN can be found at : )

The , 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.


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 or (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 . 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.


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:

I hope this is helpful. Please feel free to call me should you have any questions relating to this subject matter.


P.S.: a cute video for more personal applications (if you have a few minutes for a smile) Enjoy !

Find me at !


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 “”, 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 “” was transformed into “”. 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
.com = commercial organization
.net = internet service provider
.org = non profit 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
.ca = Canada
.ch - China
.eg = Egypt
.gr = Germany
.ie = Ireland
.il = Israel
.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, 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

1550 Metcalfe, Suite 800
Montréal, Québec
H3A 1X6

Direct telephone: (514) 499-7444