Trademark Protection For .TEL

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

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/


Proper Domain Name Use

This article is presented to you with the compliments of ARVIC and the author. We remind you this article is the copyright property of the author. Distribution in whole is permitted provided the author is credited.

Internet Domain Names as Trademarks

The use of Internet domain names has generated a number of questions that directly pertain to trademark law. The question most commonly asked is whether a term, which is a domain name, can also be registered as a trademark.

The quick answer is "Yes". An Internet domain name that is used to identify and distinguish the goods and/or services of one person, from the goods and/or services of all others, and is also used to indicate the source of the goods and/or services may be registered as a trademark providing it satisfies all the other rules for registration.

In order to register an Internet domain name, an applicant must show that he offers services via the Internet. Further, specimens submitted in support of the application must show use of the Internet domain name as an identifier of the source of the goods and services. The use of an Internet domain name merely as a directional reference, similar to the use of a telephone number or business address is used on stationery, business cards, or advertisements, is not use of the name as a source identifier.

Remember
"It is not enough for the applicant to be a provider of services; the applicant must also use the mark to identify the named services for which registration is sought". Providing a service which is normally 'expected or routine', in connection with the sale of one's own goods, is not a Registerable service."

Recently, the PTO clarified how it administratively classifies services associated with the World Wide Web. The PTO uses the phrases "connection" provider, "access" provider, and "content" provider to differentiate and classify services rendered via the Internet. A telephone company, or similar entity, providing the technical connection needed for communication is a "connection" provider -- a service classified in Class 38 (Telecommunications). The closely-related service rendered by entities such as America Online®, CompuServe®, Prodigy® or your local "Internet Service Provider" (ISP), is that of an "access" provider -- a service classified in Class 42 (Computer Service). An "access" provider furnishes "multiple-user access to a global computer information network."

If you are not an Internet Service Provider or a Telecommunications company then you are a "content" provider who furnishes information via the Internet, i.e., offers the service of providing information. In such cases, the service offered is an information service classifiable according to the information, e.g., a service that offers business information is classified in Class 35, a service that offers financial information is classified in Class 36, and a service that offers building construction, repair or maintenance information is classified in Class 37.

However, all "content" providers do not offer registerable services vis-a-vis an Internet domain name. For example, Internet domain name locations that simply contain advertisements or other information normally expected or routine in promoting an entity's goods or services are not registerable services. Therefore, Internet domain names must meet the same requirements for registration as all trademarks and service marks. If a domain name does meet these requirements, it will be registered.

How to use a domain name correctly

As a "content" provider you can acquire trademark rights in your domain name if you use the domain name as a trademark and not merely as an address. In order to do this the first step you must take is to accept as a fact the following statement.

Remember
The operation of a web site is the service of providing information. If your web site only provides information about you, your company, your products or your services then your site is incidental to the operation of your business. You can not secure or protect your right to the exclusive use of a domain name that is only self serving.

Lets start by clearly understanding what it is that needs to be protected. To demonstrate the point we will use our URL. Our web site address is http://www.arvic.com. You will notice that every one of our pages has an ARVIC logo. Our domain name is "arvic.com". We want to protect, as a trademark, the word ARVIC as it is used in association with the services offered from this web site.

In order for a web site to qualify for protection it must provide services to others. Simply providing an order entry screen, technical support or product information is not a service you are providing for others but rather a service you are offering for your own benefit. On the other hand; the providing of advice, or how to information is a service to others. By way of example. The ARVIC site accepts orders for products and services. This is self serving. In addition the web site also provides (a) guides on starting your own business; (b) how to articles, (c) links to other sites, (d) an FAQ section, (e) a list of government sites and their URL addresses, (f) a greetings section, etc. These sections of our web site provide helpful information that others can access and derive a benefit. They are not self serving.

If your site announces when your representatives will be in a specific location, offers a guest book, provides examples of how to use something, shows samples of things accomplished by your clients, includes a list of things your clients can do on their own or offers helpful hints and suggestions then you are providing services to the public and thus your use of the domain name is protectible.

Pursuant to the trademark rules of every country no one will be granted the exclusive rights to use, as a trademark, any word or phrase that clearly describes some character, feature or trait of the services marketed in association with the domain name regardless of the fact it is not registered as a trademark. The ".COM" (dot com) portion of your domain name is a character or trait. You can never own this feature.

PROPER USE OF A DOMAIN NAME
The most effective domain name use is consistent and continuous. A domain name (mark) can fall into the public domain if used carelessly. Protection or registration can become more difficult if the company's use of the mark has been incorrect.

The main way to prevent a mark from becoming public property is to show that the mark is not merely descriptive of your company's services. It is your badge of distinction and not the name for the service. Here is a collection of rules for you to follow.

1.

Use your Domain Name as an Adjective
Always use your domain name as an adjective, not as a noun. For example, it is not correct to refer to "services of ARVIC". It is correct to refer to "ARVIC" search services or ARVIC trademark reports. Be sure to use terms such as "ARVIC invites you to visit" or "bookmark by adding ARVIC" whenever you reference your web site.
2.

No Plurals
Use your domain name consistently and exactly. Do not use the domain name in plural form. It is correct to say "Order three ARVIC Searches and receive the fourth one free". It is not correct to say "Order three ARVIC's and get one free".
3.

Capitals - Use upper case letters
Unless your domain name specifically uses a lower case initial letter, it should always have a capitalized initial letter or be set out in all capitals.
4.

No Changes
Do not change the mark through additions, prefixes or suffixes (unless you intend to create another trademark). Do not use the mark with a possessive form: It is not correct to refer to "ARVICs" services. It is correct to refer to the services offered on the "ARVIC" site.
5.

Family of Marks
If your business uses a group of domain names which have a single component common to each then creating an association among the various marks may allow you to be able to prevent other businesses from using an otherwise dissimilar mark having the same component. (The basic "Kodak" trademark, for example, has spawned KODA- trademarks, such as Kodacolor and Kodachrome,)

If you decide to create a "family" of domain names, and to establish overall protection which is greater than the sum of the parts, follow as many of the following practices as possible:

1.

Adopt a highly arbitrary component that is capable of being used, recognized, and protected by itself.
2.

Make a conscious effort to use, display and advertise the "family" of marks in such a way that consumers become aware that the family exists and associate the family with the trademark owner. Use advertising techniques such as "Another product in the '[Trademark]' family of computer programs."
3.

Advertise in this manner continuously and, if possible, heavily.

These guidelines should be distributed to and followed by all of your employees. To protect your domain names value and keep it alive, it is critical that it be used CORRECTLY. Your failure to observe these rules will result in your inability to defend your domain name if challenged by a trademark holder. In other words, "If you do not follow these rules chances are someone will be successful if they sue you."

TRADEMARK NOTICES

If you want the world to know that a specific domain name is yours then you must give PUBLIC NOTICE of the fact that you have adopted and are using the domain name, as well as all the icons and gifs on the web site, as trademarks. Using at least one of the following notice formats on every new page within your URL is public notice of that fact. In the alternative use one of the notice examples for each trademark used in a prominent place at the top or bottom of every new page.

First - If you own Registered Trademarks
For trademarks registered with the US Patent and Trademark Office, place the ® symbol in the upper right-hand corner of the mark. For marks registered with the Canadian Intellectual Property Office, place the tm; symbol in the upper right-hand corner of the mark. DO NOT USE THE ® symbol on marks registered in Canada or any other country.

As an alternative, or in addition to the use of the symbol, give public notice at or near the bottom of the page where the marks are displayed. For marks registered in the USA us the phrase "Registered in the U.S. Patent and Trademark Office" or the abbreviated version "Reg. USPTO." For marks registered in Canada use the phrase "Registered in the Canadian Intellectual Property Office " or the abbreviated version "Reg. CIPO."

Second - Unregistered ("Common Law") Trademarks
Domain names do not need to be registered in order to have legal protection against infringement. To serve public notice that this is your mark place the tm; symbol in the upper right hand corner of the domain name. Do not use the ® symbol unless or until federal registration is actually issued in the USA. False use of a public notice of the ® symbol can result in the denial of federal registration or refusal of enforcement by a court.

Third - Exceptions.
When it is not possible to use the above notices, a notice on the bottom of the page should identify each of your trademarks. If practical, place a small asterisk in the upper right-hand corner of the trademark, along with the applicable asterisked notices at the bottom of the page.

*

"* ® the property of XYZ Company. Reg. USPTO" (for US registered marks).
*

"* tm; the property of XYZ Company. Reg. CIPO" (for CDN registered marks).
*

"* tm; the property of XYZ Company." (for all unregistered marks used in any country).

When a number of trademarks are used within the same page, a notice such as the following, may be used;

*

"GADGET" and "WIDGET" are trademarks of XYZ Company. Reg. USPTO" or
*

"GADGET" and "WIDGET" are trademarks of XYZ Company. Reg. CIPO" or
*

"GADGET" and "WIDGET" are trademarks of XYZ Company"

It is a common courtesy, but not legally required, to acknowledge the trademarks of others used in comparison advertising.

Fourth - Correspondence
Your objective is to make the domain name stand proud of the rest of the text. Look again at every occurrence of the word ARVIC on this page. In business letters, faxes, e-mail or memos, and on your web site your domain name should be identified by use of capital letters, bold face type, larger font size, different colour, italics, or quotation marks. We distinguish our trademark by the use of a hyperlink to our About page. We do not recommend the use of underline or double underline.

MANAGEMENT AND RECORD KEEPING
As the owner of a domain name it is incumbent upon you to not only use the name correctly but also to keep records of such use. In this regard we strongly suggest your web master should also be your Trademarks Coordinator. This person should administer all aspects of your domain name use. They include;

1.

Training your employees in proper use of your trademarks,
2.

Reviewing and clearing all advertising and promotional copy prior to publishing,
3.

Advising your customers and competitors of your marks and ownership in same,
4.

Deciding, with the assistance of your trademark agent, whether to register the domain name as a trademark with the Canadian, American or other Trademark Office,
5.

Deciding, with your attorney's advice, what action to take against infringers.

Evidence of First Use of your Domain Name
The day you secure registration of your domain name is not the date the name is used for the first time. The record of registration is only evidence of registration. Use of the domain does not occur until such time as the first visitor arrives at your site. The fact that you advertised and promoted the site is incidental.

Make sure all your employees -- from the mail clerk to chief executive, and particularly all marketing, advertising, packaging, and secretarial employees -- know what trademarks you are using and how to use them correctly. Experience shows that a printed trademark policy generally does not provide sufficient reminders unless supplemented with periodic meetings.

Make sure any outside advertising or public relations firms you retain know what trademarks you are using and how to use them. Review all advertising and promotional copy for correct and most effective trademark usage.

Misuse and Infringement.
Your employees and customers should watch for misuse and infringement of your domain name. If they visit a site that has your site described as above, then you must contact the web master of the site and make certain the narrative is corrected. Misuse of your domain name would include making changes, even unintentionally, or using your domain name as the common name of the goods or services. Infringing marks would include use by another company of a product name or logo that, when used on their product, so closely resembles one of your trademarks as to cause confusion or mistake, or deceive customers.

Your trademark coordinator should collect information on infringement and misuse, and consider (with the advice of your attorney) whether a demand letter should be sent or other action taken. Employees should not take action on their own if they detect misuse or infringement.

Records.
Establish a file for collecting documents relating to your trademarks. When it comes to determining who used a mark first, establishing distinctiveness, (i.e. "secondary meaning"), or proving continuous use of the mark in commerce the company with the best documented historical evidence is in the most favourable position. This is critical in the case of a mark that is not registered. Your file for each mark should be used to collect:

1.

Records, letters, invoices, receipts and other documents related to the adoption and date of first use.
2.

Copies of agreements with outside graphic artists assigning right, title, and interest to the owner.
3.

Copies of all advertisements that use the mark, dated as of their appearance, together with records of company expenses for that advertising;
4.

Yearly summaries of the amount of product sold under the particular mark;
5.

Copies of printed promotional material as they are delivered from the printer along with a copy of the invoice.
6.

A record of any sites you have requested link to you including copies of the requests.
7.

Records relating to any changes in the links, pages, bookmarks, material etc.
8.

Any demand letters to others who try to pirate your mark by using the same or a deceptively similar mark.

Once your domain name is registered as a trademark your certificate of registration is evidence of ownership as of the date on the certificate. From that date forward you are not required to prove you used the mark as of a particular start date. However, you may be required to prove that the mark is still in use. To prove the mark is still in use you should maintain at least a two year record of all of the above.

The next and last step
Now that you know how to use your domain name correctly to secure trademark rights, and have already decided to make the changes to your web site as suggested above, we think you should also give consideration to confirming you are not infringing on the rights of others. For a fee of $40.00 Canadian ARVIC, will prepare a search of both the Canadian and American trademarks data bases. To order the search click Home

We trust, now that you have read this article, that you will come to the conclusion that you should include a trademark specialist on your list of professional advisors. The staff at ARVIC, welcome the opportunity to be your advisor. If this article has left you with any unresolved questions then we ask that you direct them to us. We further ask that you take the time to learn all about ARVIC, who we are, what we can do for you and why you should retain our firm.

Arvic Search Services Inc.