The intellectual property laws surrounding domain names is rapidly changing. Each case is very fact specific. Regardless, domain names can be registered as trade-marks so long as they are being ‘used’ as trade-marks. Applications for registration of marks consisting of domain names are subject to the same requirements as all other applications for trade-mark registration and receive the same protection and enjoy the same benefits. (See Articles – Trade-marks).
When a trade-mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD (.com; .ca; .net; .org; .info; .biz; etc.) have any trade-mark significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address.
Today, advertisements for all types of products and services routinely include a URL for the web site of the owner. This may not be sufficient to pass the test of trade-mark use. Prior to filing an application for a domain name, the product label should be assessed by a registered trade-mark agent.
O’BRIEN TM SERVICES provides its clients with guidelines and advice as to whether they should be obtaining trade-mark protection of their domain name under the Trade-marks Act.