Trademark trolls need to get a life.
One of my favourite parts of practicing trademark law is getting to work with creative people. I love having a front-row seat to the process of developing and nurturing a brand. I get inspired by the inventiveness that leads to selecting the perfect name for a business, product and service, and the insight that is similarly applied in devising the right logos and taglines.
So I really hate it when I see people — utterly incapable of developing a single creative or original thought themselves — steal someone else’s intellectual property, and then demand a ransom for its return.
I’m not talking about garden-variety trademark infringement. The motives driving it are sometimes nefarious, but more often it occurs when one party either did not know another similar trademark existed, or did know but did not think it would be an issue.
No, the term “trademark troll” is reserved for a particular type of deviant. Because while there are many ways trademark infringement could occur, the exploitation of domain names online is unique, owing to the sheer volume of top-level domains (.com, .ca, .org) available. It would be near impossible for a brand owner to register domain names for its trademark combined with every single one of those top level domains.
So the trolls take advantage by finding more obscure top-level domains (.biz, .app, for example) and registering those in association with the brand owner’s trademark. And they don’t use them for any business purpose (unless you consider the transmission of a letter demanding payment in exchange for the return of the domain to be a legitimate business transaction).
This is theft of intellectual property and ought to be dealt with accordingly, either through litigation or dispute-resolution procedures. Litigation may be time-consuming and costly, but domain name squatters are not worthy of a brand owner’s good-faith negotiation efforts. The Internet Corporation for Assigned Names and Numbers (ICANN) administers a Uniform Domain-Name Dispute-Resolution Policy (UDRP) for issues relating to domain name disputes on the .com register.
In Canada, brand owners should seek recourse in disputes involving .ca domains with the Domain Name Dispute Resolution (CDRP) Arbitration procedure. But in order to be eligible to commence arbitration under CDRP, the person initiating the complaint must own a .ca domain.
It may surprise non-Canadian brand owners to learn that they must have a Canadian presence as a condition of registering a .ca domain. This presence is most often satisfied by being a Canadian resident, being a corporation incorporated in Canada or by having a registered (not merely pending) trademark with the Canadian Intellectual Property Office. This can be a painful lesson for non-Canadian brand owners who have no corporate presence in Canada, nor a trademark that is yet registered, but are nonetheless known to Canadians and find themselves unable to register a .ca domain that incorporates their trademark.
Whatsapp Inc., the non-Canadian owner of the well-known instant messaging service bearing the trademark WHATSAPP was able to successfully convince the British Columbia International Commercial Arbitration Centre to order that a domain-name squatter, with no legitimate claim to the whatsapp.ca domain, transfer registration to its rightful owner. The squatter was clearly acting in bad faith as it had acquired the domain for the clear and demonstrated purpose of selling it back to its rightful owner for a profit.
Cases like these serve as a useful reminder to non-Canadian brand owners to take steps to protect their intellectual property and apply for trademark registration as early as possible.
In the meantime, the battle against the trolls wages on.
Chad Finkelstein is a franchise lawyer and registered trademark agent at Dale & Lessmann LLP (www.dalelessmann.com) in Toronto.
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