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Choosing a business name that has a suitable domain name was becoming incredibly difficult. The good news is that in 2013, the Internet Corporation of Assigned Names and Numbers (“ICANN”) announced a series of new top-level domains (TLD’s). TLD’s are the extensions that specifies a website type and location; .com or .ca for example.

There are currently only a dozen or so to choose from. But a huge expansion in 2014 will see another 1400 TLD’s become available; from .venture, .inc, .ltd and .llp to .enterprises, .law and .lawyer.

While the new domain name expansion will help businesses find a suitable domain name, there will be growth in name and domain name disputes along with other hurdles for business owners.

It is important to tread cautiously and know the domain name dispute rules to ensure you do not find yourself on the wrong end of a domain name dispute. Contrary to popular belief “cybersquatting” where someone buys and holds domains of an existing business and trade-mark with the sole intention of selling them for a profit is often illegal.

Where someone registers a domain name that is similar to the name or trade-mark of an existing business, often the trade-mark holder has a legal remedy, particularly where it is clear that:

  1. The domain holder has only registered the domain to fool people into thinking that the registrant is associated with that business, an act called passing off; or
  1. The domain holder bought the domain for the purpose of selling it to a person who has a legitimate business interest in the name.

The Gongshow Domain Name Dispute

A perfect example is the Canadian hockey apparel company Gongshow Gear and the disputed domain www.gongshow.com. The domain had lawfully belonged, for more than 10 years, to a blogger whose last name was Gong. In November 2012, the domain was sold in a closed auction, however Gongshow Gear was not invited to bid. Instead, the new purchaser of the domain, an individual located in Dubai, tried to flip the domain and sell it to Gongshow Gear for $18,000.

Instead of paying for the domain, Gongshow filed a complaint with the Internet Corporation for Assigned Names and Numbers, or ICANN, the international body that regulates website addresses and won the domain without paying a cent. To do so, Gongshow Gear had to prove three main items under the ICANN rules:

  1. That the domain was confusingly similar to Gongshow’s trademark;
  2. That the owner of the name did not have a legitimate interest in it (i.e. he or she was cybersquatting); and
  3. The owner was using the domain in bad faith.

Gongshow, who had been building their brand in Canada and around the world for the previous 11 years was successful on each point.

There are different proceedings for resolving a dispute over an American domain name (.com, .us etc.) and a Canadian domain name (.ca). For an American domain name, dispute resolution is governed by the Uniform Domain-Name Dispute Resolution Policy (UDRP) an arm of ICANN.  The Canadian Internet Registration Authority (CIRA) has its own Domain Name Dispute Resolution Policy (“the CDRP”) for Canadian domain names.  Both organizations use a private dispute resolution setting where disputes are usually carried out in writing and adjudicated by one or three arbitrators.

Hosting providers like GoDaddy are offering a pre-registration period for some of the new TLD’s. The intention is to let the holders of trade-marks register their domains first in the hopes of avoiding cybersquatting disputes like Gongshow’s. So, if you have not done so already, trade-marking your name will help get you to the front of the line and in some cases may give you a better claim to a domain name if contested.

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John Wires is a Toronto business lawyer who comes from a corporate litigation background. John is the founder of Wires Law, a law firm serving corporate, technology and e-commerce clients across Canada. He was called to the Bar of the Law Society of Upper Canada in 2011 and has appeared in the Ontario Superior Court, the Ontario Court of Appeal and private arbitrations. John graduated from law school with first class honours specializing in both International Trade and Corporate Commercial Law. Having litigated shareholder and employee disputes he understands the value of companies protecting their businesses with the proper upfront legal work many Canadian businesses lack.