Domain Name Objections: Necessities, Not Options

“There are databases and services available that will notify brand owners whenever a domain name is registered that has their brand name, or something similar.” — Daniel Anthony

If there’s any doubt that domain-name objections are a core component of a modern intellectual property (IP) enforcement strategy, a quick glance at the World Intellectual Property Organization’s (WIPO) 2025 Domain Name Report should easily dispel the notion.

In what WIPO called its “highest caseload on record”, the organization managed more than 6,200 domain name cases in 2025 under the Uniform Domain Name Dispute Resolution Policy (UDRP), which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), the regulatory body for domain names – and over the past 25 years it has resolved more than 80,000 cases in all.

“Domain name objections protect your brand from misuse,” says Daniel Anthony, Principal in the Ottawa office of Smart & Biggar, a member of the IPH Network. “And that includes things like losing money to a competitor’s website, losing traffic intended for your business, brand devaluation, and negative brand perception.”

The many guises of brand misuse

Brand misuse can take several forms, Anthony observes. The most common are:

E-mail solicitations where the part of the offender’s e-mail address that comes after the @ symbol misleadingly contains the genuine brand name: “That allows for conduct like phishing fraud”;
Posting a website at a domain that contains the genuine brand name: “The infringing website might then show up in a Google search for the brand, often in the first five listings, which may take users to a website that sells genuine products without permission, or counterfeit goods, or differently branded competing merchandise”; and
Misdirecting traffic by registering domains that are very similar to a well-known brand but that may contain typos: “In this case, the offending domain trades on someone else’s trademark by directing traffic intended for the brand owner to other sites or even passes that traffic on to the brand owner’s real site in order to obtain referral commissions”.

Check it out

It’s relatively easy to check for infringement.

“There are databases and services available that will notify brand owners whenever a domain name is registered that includes their brand name, or something similar, in it,” Anthony says.

Which is not to say that all brand owners should run searches continuously.

“If you don’t want to get these notices every week, you might decide to run a search of all registered domain names containing your brand every six months,” Anthony says.

Nor is it wise to expend resources by going after every domain that appears to be infringing.

“Brand owners should rank the domains that turn up in their searches. Registered names that are completely inactive are usually low risk. Those with only a neutral landing page or a ‘coming soon’ notice are medium risk. The high-risk ones are domains registered by competitors or by someone impersonating your brand or that redirect traffic intended for your website to some other active site.”
Daniel Anthony

The formal procedures

In terms of formal domain name objection procedure, generic domain extensions use the UDRP. For country-code extensions, each country can set up its own process or adopt the standard UDRP process.

“Canada uses a process called the CDRP—the CIRA (Canadian Internet Registration Authority) Domain Name Dispute Resolution Policy – for challenging bad-faith registrations that end in ca,” Anthony says. “It’s the equivalent of the UDRP that applies to .com, .net, .org and other generic extensions, but with distinctly Canadian features.”

UDRP complainants must establish that:

The disputed domain name is identical or confusingly similar to the complainant’s trademark;
The owner of the disputed domain has no legitimate right or interest in it. For example, the owner does not itself have trademark rights in the domain, and the domain is merely a generic or descriptive term, such as cheapcars.com.
The disputed domain was registered and used in bad faith. One way complainants can meet this criterion is by demonstrating that the impugned domain is being used to wrongfully capitalize on the brand’s reputation or mislead customers.

UDRP remedies allow only for cancellation of the impugned domain name registration, or its transfer to the complainant brand owner.

The biggest structural difference between CDRP and UDRP is CDRP’s requirement that complainants must satisfy the Canadian presence requirement, meaning that foreign brand owners with no Canadian presence and no Canadian Registered Trademark cannot use the CDRP until they meet one of those two requirements.

Other differences include:

A definition of “mark” tailored to Canadian law;
A narrower “confusingly similar” test; and
A potential monetary penalty if there is bad faith on the complainant’s side in bringing the complaint.

The alternatives

Generally speaking, UDRP-type processes are relatively quick to resolve and more cost-effective than resorting to court action. Which is not to say that UDRP or its equivalent are always the most effective way to deal with domain name disputes.

“Takedown letters are frequently effective if you don’t need to actually recover the domain,” Anthony says. “Writing to the registrar managing the offending domain can serve to block it from being used for fraudulent e-mails, or to the provider hosting the website to have infringing content pull down.”

Deciding what to do is where retaining counsel’s skill and judgment comes into play.

“Good counsel will always tailor their advice to the client’s business goals. At one extreme, the company needs the domain for a new project and has to secure it; at the other, it just wants the biggest bang for buck in removing or disabling infringing content. Counsel then ensures the effort and resources expended match that goal.”

Anthony cites the example of a popular brand which discovered that some enthusiasts had registered a domain that included the brand name but did so with the intention of disseminating advice on how to creatively use the company’s products.

“At first the company demanded that the fans shut down the site,” Anthony recalls. “But telling thousands of fans of your brand to get a new domain for their online community might leave a bad taste in their mouth. So, on counsel’s advice, the company backtracked.”

If an unauthorized fan or commentary website leveraging a brand in the domain name is non-commercial, Anthony may advise clients to reach out to the owners and investigate whether there is any intention to commercialize.

“Counsel can help clients avoid a potential mess where they are unfairly or improperly going after a good faith party whose use of the brand name in their domain may actually be helping the business.”

Counsel’s advice can also be critical in negotiations aimed at recovering a domain without having to make use of domain arbitration or confrontational takedown directives.

“Sometimes it’s just a case of explaining the rules to people who don’t understand them,” Anthony says. “That kind of polite conversation and empathy can and has resulted in getting a key domain name back in just a few days.”