Intellectual Property and Domain Names

Photo by Wolfgang Zenz

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About 10-15 years ago, there was a thriving business in registering domain names for well-known or famous people or companies and then selling them for sometimes amazing amounts of money. Eventually, various internet registration authorities were created with the legal power to require domain name ‘squatters’ to give them up and return them to the people/companies whose names were most closely associated with or confusingly similar to the domain names.

Although the Canadian Internet Registration Authority’s (CIRA) Domain Name Dispute Resolution Policy still provides a process to aggrieved ‘names’ to acquire domain names from such ‘squatters’, some complainants will prefer to seek the assistance of the courts where injunctions and damage awards are available. But orders transferring the domain names were considered to be outside the court’s jurisdiction. However, the Federal Court of Appeal (FCA) has recently decided that the Court does have the jurisdiction to order the transfer of domain names to the ‘rightful’ owners.

What may be of note to the average citizen from this FCA decision is that the individual’s own name (David Michaels) and his company name (Michaels Inc.) are virtually the same as that of the corporate complainant (Michaels Stores), which is generally referred to colloquially simply as “Michaels”. The Court did limit the restriction on the individual’s use of his own name to any use that could be considered to be “confusing”, that is, where the customers of Michaels Stores would believe they were dealing with “Michaels” when they were not. Mr. Michaels was permitted to continue to use his own name, presumably as “David Michaels”, on the internet and in his business.  Public (customer) confusion is to be avoided!


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