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CCCA_V3No1_Dept-Technology-FIN.qxd:CCCA_V1No2_Dept-CourtLeg-V1.qxd 1/21/09 2:45 PM Page 15 In-House Technology up the registry and maintaining an ongo- existing legal rights; morality and public If a number of companies are interest- ing monitoring system so that interested order; and community objections.A vari- ed in the same domain name, the tempta- parties can rely on an efficient objections ety of international organizations, includ- tion will be strong to be among the first process that will protect them against pos- ing the International Chamber of batch of applicants, Gardère says. On the sible infringements. By some estimates, Commerce in Paris, have agreed to other hand, say Gardère and Monteith, the cost of owning a gTLD might run administer disputes arising from objec- companies that wait too long to see how anywhere between half a million and a tions made on these grounds. things unfold might consider monitoring million dollars. In the coming months in-house coun- applications in case to protect themselves Even so, there are benefits, depending sel will have to weigh the pros and cons against competitors or trade mark on the industry. Gardère points to bank- of applying for a new gTLD. It might infringers. Consultation and planning ing, for example, where there is a lot of provide a corporate brand with more within the various sectors of a company internet fraud. Should RBC Canada visibility, cut down on infringement of a — legal, marketing and IT — is crucial own the gTLD .rbc, then it can control company’s trademarks and give it a meas- for those who want to remain masters of requests for secondary domain names, ure of control over the registration their domain. thus reducing fraud opportunities. process — or it might be an expensive Having a gTLD may be also useful in and ineffective way to market a brand. Valerie Mutton is a writer based in Bowmanville. franchising. Think of McDonalds licensing to its franchisees the right to use the .mcdonalds suffix, making it easier for them to find information. The tourism industry could benefit by using geograph- ical domains, like .toronto. And it will be possible to register interna- tional domain names in different characters than English, which ought to open up international brand exposure. While the new registration sys- tem creates new opportunities, it also creates new problems. Karen Monteith, a trade-mark agent with ClarkWilson inVancouver,says that lawyers need to be aware of appli- cation timelines as well as the whole objection process involved. accelerate with confidence. “The potential is there for trade- mark infringement,” she says, “and Move your business and legal agenda forward faster with focus, clarity and confidence. All delivered by a top-tier law firm that this is going to put a burden on understands your industry, knows your business and delivers the trademark owners and counsel to talent and experience you need to take the lead. protect their brands and monitor applications so they can object.” Objections can be made on four grounds, Monteith says — McMillan LLP | Toronto | Montréal | mcmillan.ca string confusion; interference with PRINTEMPS 2009 CCCA Canadian Corporate Counsel Association 15