July 10, 2013
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A domain name is an address that is used to identify and find web pages on the Internet. A business' domain name is central to the web-based activities that it conducts. Trademark registration is the most effective way of protecting your website domain name, and many businesses register domain names that contain their trademarks. For example, Costco has registered a trademark for the domain name "costco.com".

The right to use a domain name is determined by the trademark laws in the countries from which that website is accessible. If you begin using a domain name which is confusingly similar to a registered trademark, then the owner of that trademark may successfully challenge your ability to use the domain name. For example, if I begin to operate a website that uses the domain name www.costco-retail.com, then it is almost guaranteed that the owner of the registered trademark, "Costco", will take steps to force me to stop using that domain name on the basis of trademark infringement. This is because people who see or visit that domain name are likely to be confused and believe that my site is affiliated with Costco, the well-known giant membership warehouse chain, when it is not. People may also go to this website with the mistaken belief that it is Costco's website.

As the above example demonstrates, just because a company has not registered all variations of its trademark as domain names does not mean that others can use those domain names without any problem. It is prudent to do a search for your proposed domain name in the trademarks database of the jurisdiction where you intend to carry on business before beginning to use that name commercially. Once you have satisfied yourself that there are no confusingly similar names in use, you may register and use the domain name. To ensure maximum protection of your domain name, it is recommended that you:

  • file a trademark application of the mark used in your domain name (for example, "Costco"); or
  • file a trademark application for the entire domain name itself (for example, "costco.com"); or
  • file a trademark application for both (for example, "Costco" and "costco.com").
This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2017 Nelligan O’Brien Payne LLP.

Service: Business Law