- Nov 28, 2020
Finding a catchy domain name for your website is an important part of your ecommerce strategy – and one that often comes with legal hurdles.When you’re registering a domain (e.g. mltaikins.com), you’ll typically encounter three main issues: the sheer amount of domain names that are already in use, trademark infringement and domain name security.
This blog outlines some key steps to address these issues.
Acquiring a trademarkIt may be possible to overcome some of these challenges by acquiring a registered trademark in Canada. One large benefit registered trademark owners enjoy is priority registration of domain names that correspond with their trademark.
Another benefit of trademark ownership is being able to challenge the use of domain names when they are identical or confusingly similar to your registered trademarks. To find out more about the dispute resolution process, see our blog post on the topic.
Enforcing your trademarkToday, a main source of trademark infringement is caused by infringing domain names. You should take steps to enforce your trademark rights early. That starts with having an effective strategy to monitor for infringement of your trademark.
Knowing where to look for infringement — especially to catch it at an early stage before it costs you internet traffic and/or money — can be very complicated. That’s why many organizations choose to outsource their monitoring to professionals.
Other ways to protect your domain nameWhile securing trademarks and domain name registrations is important, there are other proactive steps you can take to protect your domain and end users.
- Register multiple domain names
- Choosing the right domain name registrar
- Use domain name and trademark monitoring services
While the TMCH provides services for generic top-level domains, it does not monitor for country code top-level domains, such as “.ca” in Canada. There are a variety of private cybersecurity and brand protection firms that perform similar services to the TMCH for country code top-level domains as well as providing other brand protection services. Such services can be useful to protect brands, as brand owners are increasingly registering multiple domain names under different top level-domains, often including both “.com” and “.ca” domains.
- Perform internet searches periodically
To prevent this, you can perform regular web searches of your domain names and trademarks. Additionally, you can search for similarly spelled domain names using the ICANN Lookup Tool. Whereas individuals can perform internet searches to locate similar domain names and potential infringement, the ICANN Lookup Tool enables brands to locate potential infringement without the risk of accessing the websites and potentially exposing their systems to malware.
By performing simple routine searches for your trademarks and domain names, you may be able to find and address potential infringement activities before any damage is done.
Protecting against domain name “spoofing” and doppelganger domainsThe Canadian Centre for Cybersecurity is reporting an increase in domain name “spoofing” and doppelganger domains — domains that appear to be from legitimate businesses but are often used for fraudulent purposes. In addition to the above, there are several ways to guard your domain names against these attacks.
- Mandate cybersecurity training
Mandating cybersecurity training is a proactive step you can take to address the risk of domain name spoofing and doppelganger domains. Cybersecurity training can include organization-wide instruction on how to identify and respond to suspected spoofing attempts. Additionally, cybersecurity training should include reviewing the security protocols employees must follow relating to sensitive email-related tasks, such as wire transfers.
- Have a recovery and response plan
- Initiate domain name abuse proceedings
- Implement email and transaction authentication protocols
Key takeawaysTo enjoy the full value of your domain names, you must be proactive. Once you have an ecommerce strategy in place, the additional measures outlined above are key steps to help minimize the risks to your domain names.
For assistance with registering trademarks and domain names, trademark monitoring and designing a legally compliant ecommerce strategy, contact a member of our Innovation, Data & Technology team.
How to protect your website domain name - MLT Aikins - Western Canada's Law Firm