Skip to content

Inside your domain: fighting domain name abuse

Brendan Peters

Domain names are the addresses we type into our internet browsers to be taken to a website, like ‘’. Even easy-to-remember domain names can be confused with similar ones, making them a vector of attack for bad actors. A comprehensive study published this year by the European Union has confirmed that domain name abuse is a persistent and growing issue globally. Over a three-month period, the authors recorded a staggering 2.7 million incidents and 1.68 million abused domain names.

Raising awareness of these threats and what to do about them is one step towards a safer cyber future, and this post reviews an accessible and efficient mechanism for resolving domain name disputes.

Addressing confusion: Uniform Domain Name Dispute Resolution Policy

To address domain name abuse, the World Intellectual Property Organization (“WIPO”, an agency of the United Nations) began administering the Uniform Domain Name Dispute Resolution Policy Administrative Procedure (“Procedure”) in 1999. Through the Procedure, anyone can make a complaint, requesting to have a domain name that is confusingly similar to a complainant’s trademark either cancelled or more often, transferred to the complainant’s control. A large body of cases has been reported under the Procedure.

An early but instructive example is Wal-Mart Stores, Inc. v Richard MacLeod, in which Mr. MacLeod of Toronto had registered ‘’ and wanted half a million dollars from Wal-Mart for control of the domain name. Mr. MacLeod didn’t host any content at the disputed domain, but there are many other examples of confusingly similar domain names leading customers to illegal content, such as websites selling counterfeit goods or pushing violent images and speech.

A successful complaint requires clear and concise evidence of three elements:

  1. The domain name is confusingly similar to a complainant’s trademark;
  2. The respondent has no legitimate rights in the domain name; and
  3. The domain name had been registered in bad faith.

In the Wal-Mart example, elements (2) and (3) were met as Mr. MacLeod was effectively holding the domain name hostage, and element (1) was met as the domain name was found to be confusingly similar to Wal-Mart trademarks. In meeting all three elements, Wal-Mart successfully had the domain name ‘’ transferred to its control.

While the Procedure deals with the most popular domains (.com, .org, .net), there is an analogous procedure available specifically for domain names with ‘.ca’.

A successful complaint can be cost- and time-effective

With respect to element (1), a complainant may rely on registered trademark rights or show use of an unregistered mark in association with goods and services to establish common law rights. Businesses that sell online usually have electronic copies of marketing materials and invoices showing sufficient information to establish common law rights in the mark for the purposes of the Procedure. This is especially important for smaller businesses that may not have resources to register their trademark rights and do not have a large budget to put towards evidence collection.

The complaint is submitted entirely electronically to WIPO and a decision is usually rendered by a panelist, an individual chosen by WIPO who possesses relevant skills and experience, within a few months. It generally costs a couple of thousand dollars in fees to submit the complaint, which is often done with the assistance of a trademark lawyer. Especially compared to court proceedings, the Procedure stands as a cost-effective and practical way to fight domain name abuse.

This client update is provided for general information only and does not constitute legal advice. If you have any questions about the above, please contact a member of our Intellectual Property group.


Click here to subscribe to Stewart McKelvey Thought Leadership.



Search Archive


Preparing for Canada’s “Modern Slavery Act”: considerations and guidance for businesses

November 30, 2023

By Christine Pound, ICD.D, Rebecca Saturley, & Daniel Roth Canada’s anti-modern slavery legislation comes into force on January 1, 2024. To prepare for the first reporting deadline on May 31, 2024, organizations need to determine…

Read More

Replace-me-not: Bill C-58 proposes ban on replacement workers in federal strikes and lockouts

November 29, 2023

By Brian Johnston, K.C. and Richard Jordan On November 9, 2023, Minister of Labour, Seamus O’Regan, introduced Bill C-58 in the House of Commons to amend the Canada Labour Code to prohibit the use of…

Read More

Final retail payment activities regulations released

November 28, 2023

By Kevin Landry & Eryka Gregory The Retail Payment Activities Regulations (“Regulations”) under the Retail Payment Activities Act (“RPAA”) were finalized and published in the Canada Gazette Part II on November 23, 2023. The RPAA was…

Read More

Bill C-365 calls for plan for implementation of open banking in Canada

November 17, 2023

By Kevin Landry On November 9 2023, Bill C-365, An Act respecting the implementation of a consumer-led banking system for Canadians (“C-365”), short titled as the ‘Consumer-led Banking Act’ was read in the House of…

Read More

More limits: NSCA tightens the test for disallowing a limitations defence

November 15, 2023

By Jennifer Taylor The Nova Scotia Court of Appeal (“NSCA”) has issued an important decision clarifying the test to disallow a limitations defence. The decision, Halifax (Regional Municipality) v Carvery (“Carvery”), has real implications for personal…

Read More

Anticipating changes to the Competition Act: what businesses need to know

November 1, 2023

By Deanne MacLeod, K.C., Burtley Francis & David Slipp On September 21, 2023, the Federal Government introduced Bill C-56: An Act to amend the Excise Tax Act and the Competition Act (“Bill C-56”), with the…

Read More

Powering the future: Green choice program regulations

September 22, 2023

By Nancy Rubin, K.C. and Lauren Agnew The long-awaited Green Choice Program Regulations (N.S. Reg. 155/2023) were released by the provincial government on September 8, 2023, offering some clarity into the practical implementation of Nova…

Read More

Privilege protected: Court of Appeal rules NL’s Information and Privacy Commissioner barred from reviewing solicitor-client privileged information

September 20, 2023

By Koren Thomson, John Samms, and Matthew Raske The Newfoundland and Labrador Court of Appeal has held that the Information and Privacy Commissioner for this province (the “Commissioner”) does not have the authority to order…

Read More

Amendments required for Prince Edward Island code of conduct bylaws

September 18, 2023

By Perlene Morrison, K.C. Municipalities are required to pass code of conduct bylaws in accordance with section 107 of the Municipal Government Act (the “MGA”). Subsection 107(1) of the MGA specifically states that a municipality’s…

Read More

Professionally speaking: Ontario Superior Court upholds professional regulators’ right to moderate speech

September 14, 2023

By Sheila Mecking and Kathleen Starke On August 23, 2023, the Ontario Superior Court (“ONSC”) upheld a complaints decision which ordered a psychologist to complete a continuing education or remedial program regarding professionalism in public…

Read More

Search Archive

Scroll To Top