cctld Risk of parking .ca domains?

[Irish31]

Hey all,

This may sound like a silly question, but i've been seeing so many sad stories with .COM owners over the last year, it got me wondering about our beloved .CA.

Is there any risk of .CA names being reversed hijacked or bullied away from owners via companies like we are seeing with .COM more and more each day? Since .CA really doesn't bring it that much overall from parking, is it worth parking them if there is a risk of some ad showing up that somehow could pertain to a company and thus the whole WIPO-matic red-tape machine starts up and 3k later you've somehow lost your name?

I'm not sure how the legal system works here in Canada for .CA, but I'm just looking for some advice. Maybe right now in 2008 this isn't a concern because alot of big businesses are still not getting onboard yet. But a few years down the line, as .Ca keeps ramping up, is there the windows of opportunity within Canadian IP law for this .COM type bureaucracy to sneak up on us?

I'm probably a bit paranoid and over inquisitive but the idea of losing a name, possibly a valuable one simply because it is parked but not being developed and then being challenged scares the dickens out of me.


Jay

 

[theinvestor]

If you know the name could potentially get you into trouble...why park it?

I find that if you try to change keywords also...your CTR % goes down to 0%.

So really, you don't need to park it. But, having said that....i still park all my domains. But i make sure that i go through each one individually and make sure there are no issues.

At the end of the day...if you have a trademarked name. There is still a chance of losing the name, much higher if that name is parked.

 

[katherine]

Good point.
In theory parking domains could make you more vulnerable to frivolous claims but .ca domains are just less coveted than .com domains so we don't hear about reverse hijacking stories often. Of course the more domains become valuable the more attacks will be launched against domain owners in the future... (I wonder if lufthansa will try to hijack lh.ca too).
Thanks for reminding me about the poor parking performance - I think I will just unpark my .ca.

 

[PeterMan]

I own one .ca name in particular that sometimes causes me to wonder the same thing. the .com is a very popular site, but it is a dictionary word, so I am not really clear on their ability to TM the name... The name is parked right now, but I made sure that the keywords are completely irrelevant to the .com site, I have chosen keywords that pertain directly to the dictionary meaning of the word, so I hope that helps cover my butt...

I do have plans to develop the name anyway, so we shall see what happens in the future... I have never been contacted by anyone about the name, so, again, I am not losing sleep over it... But I do understand that it is a concern...

 

[Irish31]

I have an educational .ca name and I see on it ad links for Sylvan, a popular educational group. Would this leave me open to them pushing legal action on me if they wanted the name, even though the name is generic (educate..)?

It's questions like these that i'm not always sure of the answers. And again, since I have so many names to monitor and ads can change, and I make so little, I feel like just pulling them and having them sit there. Sure, they won't make me anything while I do that, but unless I buy a clear TM name (NOT some LL.ca, but I see that happen in .COM still so how long is it before Canadian companies try it?) I should be in the clear.

 

[domainatrix]

A very interesting topic, one with many hypothetical situations. We actually have a real life one that comes "close" to your fear being realized.

A small client of ours hired us to suggest and register a domain for their tutoring service, and then develop a website. We suggested "scholastical.ca" which was no registered at all. Scholastical is a decent dictionary term about learning. Not as good as educate.ca, but pretty good.

We put up a holding page and within weeks the client was contacted by "Scholastic" a large Educational company. They demanded the domain and threatened to sue, take it to CIRA dispute, etc. Our client had no additional funds to fight this. They do not own a trademark for the term "Scholastical", but argued that their trademark "Scholastic" is part of the clients domain.

Rather than fighting this, they decided to settle and transfer the domain to Scholastic (check cira). The holding page is still up at http://www.scholastical.ca

Would CIRA have sided with the registrant or Scholastic Canada? We'll never know...

 

[GOff]

I've been approached 5 or 6 times in a few years and I've walked away each time. The small-timers are the easiest to deal with simply by getting to know them and their weakness's which can be exploited. Some realize they'd rather keep that can of worms un-opened, Some realize the time/expense of moving forward with a domainer willing to go the distance, And some are all bark and no bite (or no time for a bite). The bigger corps have done their homework and have a bigger budget and staff to deal with it. I have some upfront 'tm names in dot ca and dot com and just take each day as it comes. When spending a few k however i do take consideration on a quick roi. I hate taking a loss.

 

[Irish31]

Would be nice if we had a Canadian version of Berryhill kicking around here. I have no experience in this area. Sounds like even if I had all my domains that were not currently developed on a landing page, someone could still come along and demand the name. If they felt they had a claim they could take it to CIRA dispute and force me to spend large amounts of money.


Again, I can't say i'm worried about this happening to us now, but as investors, the longer we hold, the more valuable these gems become, the more attention it draws, and not always good attention. I'm just not sure if a generic .CA that was not parked could be the target of any claim.

 

[DropWizard.com]

A very interesting topic, one with many hypothetical situations. We actually have a real life one that comes "close" to your fear being realized.

A small client of ours hired us to suggest and register a domain for their tutoring service, and then develop a website. We suggested "scholastical.ca" which was no registered at all. Scholastical is a decent dictionary term about learning. Not as good as educate.ca, but pretty good.

We put up a holding page and within weeks the client was contacted by "Scholastic" a large Educational company. They demanded the domain and threatened to sue, take it to CIRA dispute, etc. Our client had no additional funds to fight this. They do not own a trademark for the term "Scholastical", but argued that their trademark "Scholastic" is part of the clients domain.

Rather than fighting this, they decided to settle and transfer the domain to Scholastic (check cira). The holding page is still up at http://www.scholastical.ca

Would CIRA have sided with the registrant or Scholastic Canada? We'll never know...

A fast check on TM's shows Scholastic owns a fair number of them including:

Educational services, namely providing on-line tutoring services for students in the fields of math, science, language arts, social studies, geography and history via a global computer network. FIRST USE: 20010901. FIRST USE IN COMMERCE: 20010901

I think you would have lost this one hands down.


On the other hand I own educationonline.ca which is nice and generic.....available for lease or purchase:smilewinkgrin:

 

[Irish31]

A fast check on TM's shows Scholastic owns a fair number of them including:

Educational services, namely providing on-line tutoring services for students in the fields of math, science, language arts, social studies, geography and history via a global computer network. FIRST USE: 20010901. FIRST USE IN COMMERCE: 20010901

I think you would have lost this one hands down.


On the other hand I own educationonline.ca which is nice and generic.....available for lease or purchase:smilewinkgrin:

Interesting. Where did you go to check that TM information so fast Gord? Also, since their company blurb includes the term "educational services", would that also give them some claim to Education.ca or Educate.ca?

Like where does all of this start and end? (*Can you tell i'm no legal beagle?)

 

[DropWizard.com]

Interesting. Where did you go to check that TM information so fast Gord? Also, since their company blurb includes the term "educational services", would that also give them some claim to Education.ca or Educate.ca?

Like where does all of this start and end? (*Can you tell i'm no legal beagle?)

Woof Woof :lol:

Me neither.

It's one of the things I love about an old piece of software I've used for years "domain name analyzer". It gives a straight link for tm searches.

But you can go here:

http://tess2.uspto.gov/bin/gate.exe?f=tess&state=hq53hi.1.1

and choose "new user form search" (top) and throw in your terms and search them.

You can choose singular or plural searches and also live or dead TM's.

Scholastic was around 322 live and dead but you can just surf the major ones for info.

If you get no return for your search term your domain is probably OK.

And btw dnforum also has links in here somewhere to all the major tm search pages (canada, us etc)

Educate and education are really generic terms and even if they were incorporated in a TM the holder would have to disavow any "ownership" of the term.

You can't TM a word for it's generic meaning.

 

[PeterMan]

You can't TM a word for it's generic meaning.

That is what I am counting on... :uhoh:

 

[Irish31]

That is what I am counting on... :uhoh:

Aren't we all...


Thanks Gord!

 

[hugegrowth]

The real risk is using a domain that's clearly a tm infringement to make money. Whether it's parked or not, or you have a website making revenue, a tm domain can be taken.

Parking itself shouldn't be seen as bad faith use of a domain. Some cases have found parking to be a legitimate use of a domain, some cases have found it to be a grey area, or to not make a domainer look good. Tucows annual report specifically states that one of their revenue sources is to buy domains that get traffic to make revenues on ads (parked pages), or to buy domains that will be valuable to resell. That is basically what many domainers do. There is a lot of grey area to this, but if you have a trademark term as a domain, or a generic word but are using it to benefit from someone else's trademark on it (e.g.: using 'budget' to show ads for car rental places), then you may possibly have a problem down the road. If you think you might have a possible problem, build a webpage or make use of the domain somehow that is legitimate. It might make your case stronger that you are using the domain, and looks better than parking or doing nothing.

I agree that we will see more companies try to claim domains as they are discovered to be more valuable, and this will include lots of late comers and overzealous grabs at domains they have no right to.

 

[katherine]

Would be nice if we had a Canadian version of Berryhill kicking around here.

Actually we have a few.
I have heard good reports of Zak Muscovitch but never had to retain his services yet

 

[Irish31]

The real risk is using a domain that's clearly a tm infringement to make money. Whether it's parked or not, or you have a website making revenue, a tm domain can be taken.

Parking itself shouldn't be seen as bad faith use of a domain. Some cases have found parking to be a legitimate use of a domain, some cases have found it to be a grey area, or to not make a domainer look good. Tucows annual report specifically states that one of their revenue sources is to buy domains that get traffic to make revenues on ads (parked pages), or to buy domains that will be valuable to resell. That is basically what many domainers do. There is a lot of grey area to this, but if you have a trademark term as a domain, or a generic word but are using it to benefit from someone else's trademark on it (e.g.: using 'budget' to show ads for car rental places), then you may possibly have a problem down the road. If you think you might have a possible problem, build a webpage or make use of the domain somehow that is legitimate. It might make your case stronger that you are using the domain, and looks better than parking or doing nothing.

I agree that we will see more companies try to claim domains as they are discovered to be more valuable, and this will include lots of late comers and overzealous grabs at domains they have no right to.

Too true. I think at this point, the group of us .CA'ers on DNForum have been around long enough to see the trends .COM has gone through. Obviously .CA will never reach the value of .COM, but that will not stop many Canadian businesses from shuning the idea of securing a name now, and then refuse to pay the price for one 3-5 years from now.

Instead, they may try the legal angle and bully the name away. Sadly, this seems to be a consistently cheaper way to get names (unless they are low quality names, and then you at least know the company really wants it). Perhaps this way we can better educate eachother and maybe prepare? for situations like this. Maybe it won't happen, but I really don't see why it won't.

 

[hugegrowth]

I've always had the impression that its harder to take away a .ca domain than a .com. More often with a .ca, when the respondent should clearly be the winner they are. There was one case with a geo .ca (around Niagara I think), when the respondent had a case, but they lost because they didn't even bother to show up.

 

[whitebark]

Since .CA really doesn't bring it that much overall from parking

Something for another thread..

As for parking and losing domains - it's all part of doing business in this field, you try to avoid it, but if you have enough domains they will come calling sooner or later.

 

[Ricks]

There's a great blogpost on DomainBits.com interviewing lawyer Zak Muscovitch about Canadian domains and trademark law.

In the interview Zak quotes a decision from Justice Wright saying:
“Simply because a domain name is identical or similar to a trademark name should not result in the transfer of the domain name to the trademark owner. In my view, unless there is some evidence that the use of the domain name infringes on the use of the trademark name, a person other than the owner of the trademark should be able to continue to use the domain name.”

The post is here http://www.domainbits.com/canadian-domain-laws/

 

[DropWizard.com]

I've read so many brain dead panelist urdrp decisions it's a real relief that a canadian judge hit all the issues right on the head with the molson decision.

It's really worth reading if you want to understand some tm issues.

http://www.lawyertoronto.com/black.shtml

He states molson should have never received a tm on "canadian" as that is generic. It should have had a descriptor such as "molson canadian". IMO the term scholastic is probably the same. They never should have gotten a tm on that term for educational purposes.