NSFRE
CONGRESS 2000
Domain Names and Trade-marks on the Internet:
New Frontiers in Charitable Fundraising
Carter & Associates
Barristers, Solicitors & Trade Mark Agents
211 Broadway
Orangeville, Ontario L9W 1K4
(519) 942-0001
OVERVIEW
it is essential for a donor using the Internet to be able to connect with the web site of a charity with as little confusion or problems as possible
this objective can be accomplished by using an easy to remember domain name that includes the name of the charity, i.e.,www.redcross.org, or www.salvationarmy.org
it can also be accomplished when a donor uses a search engine to find a web site and the charity has a generic description for a domain name, i.e., www.arthritis.ca, or www.charity.ca
it is important to carefully choose a domain name since the resulting domain name will become one of the most important assets and trade-mark of the charity
the domain name will also become more valuable the longer the domain name is used and the association between the domain name and the charity is strengthened
the right choice of domain name will enhance fundraising for the charity on the internet
a domain name is a trade-mark as well as an Internet address
a domain name needs to be protected both as an internet address as well as a trade-mark
difficulties are encountered when there are conflicts between domain names and trade-marks because there are different rules that apply to domain names as opposed to trade-marks
it is essential to understand the differences between domain names and trade-marks and then develop a pro-active strategy to co-ordinate and comply with both sets of rules
1. Definition of a Domain Name
a domain name is the numeric electronic address used to locate a computer on the Internet
it is also referred to as an "URL"
the top level portion of a domain name is the generic suffix designation of .com, .org and .net, or the geographic designation of .ca, .us, etc. for a country identifier
the second level portion of a domain name identifies the unique element of the domain name, ie, the name of the organization or individual, or a generic description, i.e., www.arthritis.ca
.com, .org and .net are administered through ICANN (The Internet Corporation of Assigned Names and Numbers)
registrations of .com's are available for as low as $15.00 Canadian per name per year through some Canadian registrars, like www.easyhosting.com
as fewer .com names remain available, the alternative generic domain names of .org and .net are becoming attractive alternatives, particularly .org for charities
the availability of .ca domain names were, until recently, limited to only federal corporations, or provincial corporations that did business in more than one province, but even a qualifying corporation could only obtain one .ca registration
as of November 1st, 2000, CIRA (Canadian International Registration Authority) has taken over the administration of .ca registrations in Canada from the University of British Columbia
now anyone or any organization in Canada can obtain a .ca registration and can obtain as many .ca registrations as they want
existing .ca registrations must re-register by no later than December 1st, 2000, otherwise the existing .ca registration will expire
new .ca registrations are available as of November 8th, 2000
the cost of .ca registrations ranges from $25.00 to $50.00 per name per year
.ca registration will likely become more popular given the scarcity of .com registrations and the desire to obtain parallel .ca registration to match existing .com registrations
1. The Basic Nature of a Trade-Mark.
a trade-mark is a specific mark used for the purpose of distinguishing services or products from those of others and has application to charities as well as businesses
a trade-mark represents the goodwill of a charity
trade-marks are recognized and protected at common law but receive additional protection by registration under the Trade-Marks Act
2. What Do Trade-Marks Consist Of?
a single word, i.e., "Precepts"
a combination of words, i.e., "Focus on Friends"
a logo or symbol, i.e., the big "M" for McDonalds
a slogan, i.e., "You Deserve a Break Today"
a package or container designs, i.e., "the Coca-Cola bottle"
a telephone number, i.e., "967-1111"
a domain name, ie "www.microsoft.com"
3. Types of Trade-Marks Involving Charities.
the corporate name of a charity, i.e., "ABC Relief Agency of Canada"
the portion of a corporate name by which a charity is identified, i.e.,
"ABC Relief Agency" of ABC Relief Agency of Canada
a division of a charity, i.e., "ABC Children's Clubs", a division of ABC Relief
Agency of Canada
a logo for a charity, i.e.,
emblems or crests of a charity, i.e.,
a slogan, i.e., "Let's Give" or "The Spirit of Giving" or "Imagine"
D. WHY ARE TRADE-MARKS IMPORTANT TO CHARITIES?
1. A Trade-Mark is One of the Most Valuable Assets of a Charity but its value is often overlooked.
2. Trade-Marks Represent the Goodwill of a Charity by Providing a Focal Point For:
establishing and maintaining a presence on the internet
links to or from other web sites
donations from regular supporters
donations from estate gifts
enhancing the reputation of a charity in the public domain
future expansion of charitable activities
commercial sponsorship arrangements in exchange for rights to use trade-marks of a charity
3. Trade-Marks Distinguish One Charity From Another thereby Avoiding Confusion in Contact with and Donations from Donors.
4. Trade-Marks Have Present and Future Marketing Value in Relation to Books, Tapes, Videos, Televisions, Internet and Products through Licensing Arrangements.
5. Trade-Marks Have Licensing Value With Local Chapters or Affiliates of the Charity in Other Countries.
1. Trade-Marks are Governed by Domestic Trade-Mark Legislation in Each Country, Whereas Domain Names are Regulated by ICANN Worldwide.
i.e. it is possible to have a domain name for www.presidentchoice.com as well as www.presidentschoice.com
multiple domain names will insulate key domain names that are used by a charity by creating a "safe zone" around the key domain names
multiple domain names will assist donors in finding the charity on the Internet through both regular www searches and search engines
multiple domain names will preclude others from misappropriating a similar domain name of a charity
i.e., www.arthritis.com
i.e., www.christians.com
i.e. www.charity.ca
i.e., www.worldvision.org, www.worldvisionofcanada.org
i.e., www.salvationarmy.org or www.sallyann.org
if possible, obtain the "trilogy" of .com, .org and .net
obtain parallel .ca registration in Canada
obtain geographic top level domain names in other countries if possible, i.e., .us in the United States
i.e., registering the plural name, www.redcrosses.org
i.e., registering the name with a hyphen www.red-cross.org
i.e., registering the name with an underscore www.red_cross.org
a domain name with a slogan can help users find the site of the charity and will preclude others from misappropriating the goodwill of the slogon on the internet
i.e., www.youdeserveabreaktoday.com, or www.thespiritofgiving.org
i.e. or www.protectingyourinterests.com for clean firm
domain name registrations are for a specific period of time
domain names will expire unless renewed
it is important to set up a reminder system to renew domain names well in advance of the expiry date
it is essential to establish a staff person to be a domain name portfolio manager for the charity to keep track of the multiple domain name renewal dates
www.nameprotect.com will provide free notification of forthcoming expiration dates
to avoid trade-mark infringement of both registered and unregistered trade marks and resulting lawsuits
to determine the extent of current trade-mark registration to see if a domain name can be registered as a trade-mark
Internet domain name search searches for .com, .org, .net and .ca
corporate NUANS name search
business name search in various provinces
telephone listing directory such as 701.com and 411.com
Canada Customs and Revenue Agency list of registered charities
trade journals
trade associations
online Canadian trade-mark search
Canadian trade-mark registerability opinion
online U.S. trade-mark search
U.S. trade-mark registerability search
trade-mark searches in other countries
1. Trade-Mark Registration Provides a Presumption of Ownership of a Valid Trade-Mark.
a domain name can be registered as a trade-mark
establishes legal title to trade-marks similar to the registration of a deed of land
a court will presume the validity of a registered trade-mark instead of having to establish it before a Court
a domain name of www.precept.com will not stop someone else registering www.precepts.com
but a registered trade-mark for www.precept.com will allow action for trade-mark infringement if www.precepts.com is registered
may be necessary to register the domain name as a trade-mark in Canada for .ca and in the United States for .com
3. Trade-Mark Registration is Effective Throughout Canada.
registration is effective even if the trade-mark has only local application
at common law, a trade-mark rights are limited to the local area in which it operates
4. Trade-Mark Registration Permits Enforcement Across Canada.
can be enforced either in the Federal Court of Canada or Provincial Superior Court
at common law, the action is limited to Provincial Superior Court
5. Trade-Mark Registration Provides the Exclusive Right to Use the Trade-Mark in Canada.
exclusive right to use the trade-mark in association with its goods and services
in effect for fifteen years
is renewable every fifteen years thereafter
6. Trade-Mark Application in Canada Permits Filings in Other Countries.
the filing date for a trade-mark application in Canada will permit the same filing date to be used in other "Convention" countries within a period of six months
generally easier to obtain registration in other Countries if there is a registered trade-mark in Canada
1. What is a Section 9 Official Mark?
the domain names of a charity can be registered as Section 9 Official MarksSection 9(1)(n)(iii) of the Trade-Marks Act prohibits anyone from using an Official Mark in association with any goods or services in Canada
public notice of the "Official Mark" is given through the filing and advertisement of the Official Mark in the Trade-marks Journal
some examples of organizations that have had Section 9 Official Marks published:
The Canadian Olympic Association
Ontario Society for Crippled Children
The Hutterian Bretheran Church
until May/1999 it was difficult for a charity to obtain a Section 9 Official Mark notice but it is now available again
however, it is not known how long Section 9 Official Marks will continue
better to be pro-active and obtain Section 9 Official Marks now
2. The Advantages of a Section 9 Official Mark.
a Section 9 Mark prohibits anyone else using the mark for any wares or services
a Section 9 Official Mark cannot be lost from lack of usage and therefore is easier to defend
there are no detailed examinations of a Section 9 Mark other than confirmation that the applicant is a public authority and uses the Mark in Canada
the cost of a Section 9 Notice is approximately 50% less expensive than a trade-mark application
the test for a Section 9 Mark does not require a comparison of goods or services as is necessary under a test for a registered trade-mark
there are no renewal fees for Section 9 Mark, whereas a trade-mark registration is limited to fifteen years
a Section 9 Mark can be indirectly controlled similar to a license of a registered trade-mark by "consenting" to its use by others
3. What Constitutes a Public Authority?
"public authority" is not defined in the Trade-marks Act
the Trade-Mark office defines a "public authority" very narrowly
no rigid test has been established
case law has determined only that:
4. Section 9 Official Mark v. Regular Trade-Mark Application.
if charity has a limited budget, choose a Section 9 Official Mark first
but also need to obtain a trade-mark registration for complete protection:
1. Proper Marking.
domain names that are to be protected as trade-marks need to be identified as trade-marks like any other trade-mark
prior to trade-mark registration use " "
after the trade-mark registration use "®"
identify ownership of trade-mark, i.e., "ABC Relief Agency is a reg of ABC Relief Agency of Canada"
use markings every time that a trade-mark is used
2. Identification of License Arrangement.
license arrangement must be shown on all markings
i.e., ABC Relief Agency ®*
* a reg of ABC Relief Agency Int. used under license by ABC Relief Agency of Canada
3. Trade-Mark Marking Should be Distinctive.
a trade-mark should be used in a manner to distinguish it from descriptive or generic words
this can be done by using distinctive type, bold type or capitalization
4. Trade-Marks Should be Used as an Adjective Not a Noun.
always use trade-marks as an adjective even if the trade-mark is a noun, ie., "Band-Aid Bandages"
when trade-marks are used as a noun they will become unforceable, i.e., "Linoleum"
5. Trade-Marks May Need to be Followed by Generic Name.
when a trade-mark is new or differs substantially from an existing one, it may be necessary to create or choose a suitable generic name to follow trade-mark, ie, "Xerox Copies"
6. Trade-Marks Should Avoid Plural or Possessive Applications and Maintain Consistency.
never use a trade-mark in the plural form or as a possessive
i.e., "Coca-Cola's great taste"
7. Change of Name of Owner.
all change of names of the registered owner must be shown on markings
all change of names of owners of registered trade-marks must be filed with the trade-marks office
failure to do so may result in the loss of trade-mark rights
8. Importance of Education Concerning Trade-Mark Use.
educate the board of a charity
educate the executive staff of a charity
educate the staff involved in media and publications
1. Ensure Parallel Registrations of a Trade-Mark.
incorporation with the name of a charity that includes the trade-mark and possibly even the domain name
a trade-mark which is part of a trade name (i.e., business name) needs to be registered under Provincial legislation, i.e., Business Name Act of Ontario
a trade-mark needs to be registered under the Trade-Marks Act
a trade-mark should be accompanied by a Section 9 Official Mark
a trade-mark needs to be registered as a domain name on the Internet utilizing multiple variations
registration of trade-marks in foreign jurisdictions should be considered to protect the domain names in those jurisdictions
2. Monitoring Infringement by Other Competing Trade-Marks
regular review of Internet domain names
regular review of trade journals, magazines, and newspapers
review of corporate and business name registrations
review of names in telephone books in major cities
periodic review of names of registered charities with Revenue Canada
regular review of competing trade-marks in the Trade-marks Journal
3. Be Pro-Active in Stopping Infringement of a Domain Name as a Trade-Mark.
give "polite but firm" first notice of infringement to offending party
if necessary obtain legal counsel to send formal letter of complaint of infringement
as an alternative, suggest establishing a licence agreement
then propose non-binding mediation ("ADR")
if all else fails, then may need to enforce the trade-mark or risk losing trade-mark rights altogether
4. Protecting a Domain Name as an Unregistered Trade-Mark.
protection is available under corporate law
confusing corporate names can be forced to change under corporate law
requires a complaint to the applicable government department
expunging a competing registered trade-mark
"passing off" action at common law
challenge confusing domain names
5. Protection Under the Trade-marks Act for Domain Names as Registered Trade-Marks.
infringement action available
infringement action can be brought in Federal court or in any Provincial court
do not need to establish ownership of trade-mark
is not restricted to immediate geographic area
alternative dispute resolution is a realistic option to an infringement action
6. Ensure Usage of the Trade-Mark.
if a registered trade-mark is not used for three years then it is subject to expungement under Section 45 of the Trade-Mark Act
7. Avoid Abandonment Under Common Law.
to have a trade-mark abandoned at common law it is necessary to show not only the discontinuance of use but also an attention to abandon
abandonment means the loss of both registered and unregistered trade-mark rights
ICANN developed a uniform domain name dispute resolution policy effective as of January 1st, 2000
a trade-mark owner can initiate a relatively inexpensive administrative procedure to challenge an existing domain name.
in order to prevail, the trade-mark owner must show:
use or preparations to use the domain name in connection with the bona fide offering of goods and services prior to any notice of the dispute
the domain name owner has been commonly known by the second level domain name
that the domain name owner is making legitimate non-commercial or fair use of the domain name without intent of
commercial gain
misleadingly diverting customers or
tarnishing the trade-mark at issue
4. A trade-mark owner can show that a domain name was registered and used in bad faith in a variety of ways, including showing that the domain name owner:
registered the name primarily for the purpose of selling or transferring the domain name to the trade-mark owner or a competitor of the trade-mark owner for a price greater than out-of-pocket expenses
engaged in a pattern of registering trade-marks of others to prevent the use of the domain name by the trade-mark owner
registered the domain name primarily to disrupt the business of the competitor, or
attempted to attract users to a web site for commercial gain by creating a likelihood of confusion with the trade-mark owner's trade-mark
5. Results of Domain Name Disputes are Not Consistent.
www.scientologie.org won out over the Church of Scientology
www.presidentchoice.com won out over Loblaws
6. There is likely to be a Domain Name Dispute Resolution Policy for the .ca system administered by CIRA similar to the above policy for .com under ICANN.
when a charity permits an Internet link from its site to the site of another charity
when a Canadian charity is set up on a national basis with chapters and these chapters are able to use geographic divisions of the main domain name, i.e., national charity has www.arthritis.ca, and the provinces have www.arthritis.on.ca
when a religious denomination across Canada wants to retain control over the use of the denominational domain names by local churches
when a Canadian charity expands to other countries and wishes to utilize similar domain names in those countries, possibly by utilizing local geographic first level domain names, such as www.redcross.us for the United States
when a charity permits its domain name to be used by businesses for web links or for advertising the domain name of the business in conjunction with the domain name of the charity
there must be a licensing arrangement
the license arrangement should be in writing but not necessarily
license must be granted by the owner of the trade-mark
owner must obtain direct or indirect control of the character, quality and use of the trade-mark in association with wares or services
the Trade-Marks Act deems the use of a licensee to be use of the owner
3. Use and Enforcement of License and Sponsorship Agreements.
(a) marketing
important to show that the user is a licensee
i.e., "Help The Children" is a reg of "Help The Children International" used under license by "Help the Children Canada"
this can apply to a domain name s well
(b) enforcement
licensee may call on owner to take proceeding to enforce trade-marks
licensee can establish evidence of use for a proposed use by licensor
DISCLAIMER: This summary of "Domain Names and Trade-Marks on the Internet: New Frontiers in Charitable Fundraising" is distributed with the understanding that it does not constitute legal advice or establishing the solicitor/client relationship by way of any information contained herein. The contents are intended for general information purposes only and under no circumstances can be relied upon for legal decision making without first consulting with a lawyer and obtaining a written opinion concerning the specifics of your particular situation.
By Terrance S. Carter, B.A., LL.B. Trade Mark Agent©
Carter & Associates
Barristers, Solicitors & Trade Mark Agents
211 Broadway
Orangeville, Ontario L9W 1K4
(519) 942-0001