Its name is one of the most precious assets that a business can have. These few words convey its reputation. They are the sign that clients look for to ﬁnd you and recognize your products.
Of course, in the age of the Internet, you want clients to ﬁnd you on the Web through your business name. But what can you do if someone lift s this name for the sole purpose of keeping you from using it for your Website’s name?
François A. Raymond and Nicholas Martin recently represented a major US- based company that oﬀers worldwide replacement insurance coverage for electronic devices. This company has 280 million customers worldwide.
Naturally, the client sought to register a domain name comprised of its corporate name with the suﬃx .ca to pro- mote its activities in the country. The problem was that a third party had al- ready registered that very name in March 2006.
This was a blatant case of cyber-squatting, a practice consisting of registering a domain name typically incorporating the name of a celebrity or a well- known trademark, expecting to sell it for a hugely inﬂated price to its rightful owner. In this case, the cybersquatter had registered over 4,000 domain names with the .ca suﬃx.
Swift process and a happy conclusion
On September 29, Messrs. Raymond and Martin ﬁled a complaint under the rules of the Canadian Internet Registration Authority, requesting that the do- main name be transferred to their client. They adduced evidence to show that their client was the rightful holder of the Canadian trademark corresponding to the domain name and that the cybersquatter had no legitimate interest in registering the domain name. As a matter of fact, that company had been notiﬁed of the complaint but failed to respond.
Such complaints are processed very swiftly, before an industry expert appointed to rule on the dispute: barely a month later, on November 5, the order was issued to transfer the domain name to our client.
Is your name adequately protected?
As this case illustrates the name under which a business is known is very valuable, but also vulnerable. It is protected by a sophisticated yet often complex set of legal rules.
Trademarks, patents, copyright and trade secrets are at the core of any business activity. Protecting them requires special care. Stealing a company’s plant or its truck is either impossible or very diﬃcult; but as we just saw, ill-advised individuals can easily attack the company’s image.