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MASTER OF MY DOMAIN
by
Jacques E. Labr猫che*
LEGER ROBIC RICHARD, Lawyers,
ROB I C , Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria- Bloc E - 8
th
Floor
Montreal, Quebec, Canada H2Z 2B7
Tel. (514) 987 6242 - Fax (514) 845 7874
www. robic. ca - info@robic. com
Everyone has an intuitive idea of what a domain name is. Planete Quebec's
domain name, for example, is planete. qc. ca. Generally, when you see an
address like http: //www. ibm. com you know that ibm. com is the domain
name in the address.
A machine can only be connected as a node on the Internet if it has a
domain name and a corresponding physical address. But the actual choice
of the name used as a domain name is also very important. We often hear
that there are a lot of resources on the Internet and that the real problem is
finding them! Of course, you can always do a search on Yahoo, Infoseek or
whatever, but there is a very fast way to find something when you know its
name. All you have to do is type the domain name in directly.
Big Corporations have understood this. You'll find IBM at ibm. com, Apple at
apple. com and Microsoft at micro soft. com. Usually, if you are looking for a
corporation on the Web all you need to do is to type its domain name with
the prefix www and the suffix . com (or something else if it is some other type
or organisation)
A Domain Name is therefore an identifier which associates a corporation or
entity with a product or service
Because of this, there is a conceptual link between between domain names
and trademarks (see: Protecting Intellectual Property) . Both of them
associate entities with products or services.
Real Life Facts
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*
漏 L0GER ROBIC RICHARD / ROBIC, 1996-1997.
Jacques E. Labr猫che is a lawyer with the law firm L0GER ROBIC RICHARD, g. p. and the patent * &
trademark agency firm ROBIC, g. p.
*
**
Many people latched on to this idea very quickly. Already in 1994, Joshua
Quittner, a journalist, contacted McDonald's to enquire about their domain
name registration. Not getting any response, he registered the domain name
Mcdonald s. com and used the e-mail address ronald@mcdonalds. com.
Clearly McDonald's then started to understand the importance of domain
names! Quittner eventually ceded his domain name to McDonald's in
exchange for their financing computer acquisitions for a school. There was no
real commercial damage in this case.
But there can be real commercial damage when someone misappropriates
a domain name which causes confusion and misleads the user public. If Pepsi
for example were to register the domain name Coca Cola. com, users
connecting to that address would find themselves on a Pepsi site not a Coke
site. They would be mislead. Such cases have occured and continue to
occur.
The problem of misappropriation of domain names comes from the fact that,
until recently, Network Solutions (or in Canada CA*net) , which is responsible
for domain name registration registered domain names on a "first come, first
served" basis. This state of affairs resulted in 14% of Fortune 500 companies
being unable to register their business name or trademarks because someone
else had "beat them to it", in contravention to usual commercial and legal
principles.
Domain Name Registration Process
Through Network Solutions Inc. (NSI) , InterNIC is responsible for the registration
of domain names ending in ". com", ". edu", ". net" and so on. Affiliated
organizations, like CA*net in Canada, register "regional" domain names
ending in ". CA" or ". US" for example.
In the domain name registration template now used by NSI, the applicant
must now certify that "to his or her knowledge, the use of this name does not
violate trademark or other statutes". NSI have also developed a Policy for
Domain Name Dispute when two organizations wish to use the same (or very
similar eg: Mc Donalds. com and Mc Donalds. ca) .
NSI is not a Government Agency even though it seems to act like a para-
regulatory body. The registration of a domain name does not confer legal
rights. On the other hand, it is reasonable to think that the use (as opposed to
the registration) of a domain name might create some rights.
The new Rule might now be phrased as First come, first served unless someone
can prove a pre-existing right has been violated.
*
**
NSI will only accept Registered Trademarks or Court orders as evidence in
order to cancel an "infringing" domain name. That's just one more reason for
you to register your trademarks in those countries where you do business.
In Short
Internet use may create some trademark rights. On the other hand, a
registered trademark is a tool with which you can protect your corporate
identity and that of your products and services. It's a good idea to see to it.
*
*
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ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce vou茅
depuis 1892 0 la protection et 0 la valorisation de la propri茅t茅 intellectuelle dans tous les
domaines: brevets, dessins industriels et mod猫les utilitaires; marques de commerce, marques
de certification et appellations d'origine; droits d'auteur, propri茅t茅 litt茅raire et artistique, droits
voisins et de l'artiste interpr猫te; informatique, logiciels et circuits int茅gr茅s; biotechnologies,
pharmaceutiques et obtentions v茅g茅tales; secrets de commerce, know-how et
concurrence; licences, franchises et transferts de technologies; commerce 茅lectronique,
distribution et droit des affaires; marquage, publicit茅 et 茅tiquetage; poursuite, litige et
arbitrage; v茅rification diligente et audit; et ce, tant au Canada qu'ailleurs dans le monde. La
ma卯trise des intangibles.
ROBIC, a group of lawyers and of patent and trademark agents dedicated since 1892 to the
protection and the valorization of all fields of intellectual property: patents, industrial designs
and utility patents; trademarks, certification marks and indications of origin; copyright and
entertainment law, artists and performers, neighbouring rights; computer, software and
integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets,
know-how, competition and anti-trust; licensing, franchising and technology transfers; e-
commerce, distribution and business law; marketing, publicity and labelling; prosecution
litigation and arbitration; due diligence; in Canada and throughout the world. Ideas live
here.
COPY RIGHTER
IDEAS LIVE HERE
IL A TOUT DE M0ME FALLU L'INVENTER!
LA MA0TRISE DES INTANGIBLES
LEGER ROBIC RICHARD
NOS FEN0TRES GRANDES OUVERTES SUR LE MONDE DES AFFAIRES
PA TENTER
R
ROB I C
ROBIC + DROIT +AFFAIRES +SCIENCES +ARTS
ROBIC ++++
ROBIC +LAW +BUSINESS +SCIENCE +ART
THE TRADEMARKER GROUP
TRADE MARKER
VOS ID0ES 0 LA PORT0E DU MONDE , DES AFFAIRES 0 LA GRANDEUR DE LA PLAN0TE
YOUR BUSINESS IS THE WORLD OF IDEAS; OUR BUSINESS BRINGS YOUR IDEAS TO THE WORLD
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