Domain Name Disputes In Canada: Considerations For Non-Canadian Entities

For non-Canadian companies looking to do business in Canada, securing a ".ca" domain name should be a natural part of their intellectual property strategy. The recent domain name dispute in Trucksuite LLC v Paul Donofrio et al, CDRP Decision 00440 ("Trucksuite") is another illustrative example of this point.

Trucksuite LLC ("Trucksuite") had been operating in its home jurisdiction (U.S.A.) for a period of time, and had been using the trademark TRUCKSUITE in its home jurisdiction. Trucksuite had not done business in Canada, but nevertheless had plans to expand into Canada. Trucksuite had not registered the TRUCKSUITE trademark in Canada either. In anticipation of its expansion into Canada, Trucksuite engaged a Canadian company, Paul Donofrio et al. ("Donofrio"), with the intention that Donofrio would eventually become Trucksuite's Canadian business arm or form a substantial part of Trucksuite's Canadian business operations.