201903.27

Canada’s accession to the Madrid Protocol. Should the priority right extend to domain names?

On March 17, 2019, Canada finally joined the Madrid Protocol, the Nice Agreement and the Singapore Treaty. These treaties, administered by the World Intellectual Property Organization, will come into force — with respect to Canada, June 17, 2019 — (ompi.int, March 18, 2019). The filing of a trademark in Canada will be significantly accelerated and simplified.

What about domain names? Canada is part of the long list of countries that impose a criterion of territoriality for the registration of a domain name. In other words, to register a domain name from the Canadian Internet Registration Authority or “CIRA” (the Canadian registry), it is imperative to demonstrate a presence on Canadian soil. In all consistency, this criterion of territoriality applies to complainants who intend to initiate a caDRP procedure. The ownership of a Canadian trademark obviously meets this requirement of territoriality. Given that obtaining a Canadian trademark will be facilitated, we can expect an increase in the number of Canadian domain names. It is, in fact, strongly recommended to register one or more domain names corresponding to the trademark or the verbal element of the trademark.

However, a significant difficulty arises since CIRA’s texts refer to “a registered trademark”, excluding a mere filing of a trademark. In other words, the priority right does not apply to domain names. This is a major disadvantage for trademark applicants. Indeed, at a “T1” time, an entrepreneur files a trademark application or makes an international application designating Canada. Shortly after, at a moment “T2” (this can be counted in days), a Canadian citizen, as clever as malicious, registers a domain name identical to this trademark. The entrepreneur will only get a Canadian trademark certificate much later, at a “T3” time. Given the prior date of registration of the domain name, a strict interpretation of the territoriality criterion would exclude the entrepreneur from the caDRP procedure. Therefore, it is important to extend the priority right to domain names. This solution seems the only one that is perfectly consistent with the general principles of intellectual property, including prior date and territoriality.

About IP Twins

IP Twins is an ICANN-accredited domain name registrar with 15 years of experience in domain name strategy and management. We represent trademark holders in UDRP proceedings.

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