What’s in a
Cybersquatters, typosquatters, scammers and sundry malcontents will
try to commandeer your organization’s good name. Here’s how to guard
against a whole lot of headaches. By Luigi Benetton
Your company sucks. Nobody really believes that, right? But chances are somebody out here has a bone to pick and is obsessed enough to set up a website and tell the world about it—as in, YourCompanySucks.com.
Tech-savvy malcontents can harm a company’s reputation by
registering Internet domain names that the company would
rather they didn’t. This behaviour can be contested in court.
But a simpler — and cheaper — route is taking steps to prevent,
or at least make difficult, domain-name disputes from arising in
the first place.
Such disputes don’t always go as expected. Take the case
of TorontoCaribbeanCarnival.com, the official website of
the longstanding Toronto summer festival formerly known
Why the name change? “A local Toronto newspaper had
reserved the domain name caribana.com,” says Toronto-based
McCarthy Tétrault associate Dan Glover.
“Scotiabank, a major Caribana sponsor, wanted the domain
name, so it launched a dispute.”
But the only party entitled to launch this dispute was the
trademark owner, and Scotiabank wasn’t it. So the claim failed.
Glover doesn’t know exactly what happened, but “from the
outside looking in, it looks like the rules weren’t looked at
closely enough prior to launching the complaint.”
Both websites still exist, and some brand confusion ensued.
Don’t let this happen to your company.
and domain names
Your organization’s tech and marketing departments might
be excited about the potential of a new or rebranded corporate
website, but guess whose lap the mess falls in if scolders, scammers and squatters strike?
Protecting brands and trademarks takes forethought and
collaboration by all parties involved. The experts agree: registering both trademarks and domain names is far cheaper than
taking cybersquatters, typosquatters and protest sites to task
after the fact.
“A client comes up with a new brand,” Chris Bennett offers
by way of example, “and they disclose it publicly. Somebody
hears about it and registers the domain name.”
That’s why the IP and technology lawyer at Vancouver-based
Davis LLP recommends that clients keep quiet on plans for
new brands until they get protection in place, including trade-
mark applications and domain-name registrations. “You can do
it on an intended-use basis,” he says.
“I work with a lot of marketing departments,” Bennett adds. “If
a marketing department comes up with a new brand, they come
to me and we go through the process of brand clearance, filing the
application, protecting the marks and domain names and so on.”
But Glover cautions that it’s a double-edged sword. “If you
register a domain name for a new brand before you’re ready