Fierce protection of your intellectual property rights on the internet
In this fast-paced digital age, businesses rely on the internet as a key channel to sell products and connect with customers. When conflicts arise online you need experienced and talented advisors on your side.
Smart & Biggar is at the forefront of protecting intellectual property rights on the internet. Our lawyers have expertise in all issues relating to trademark, copyright, advertising and competition law on the Internet, registration and recovery of domain names, and removal of infringing content from the internet. The internet operates without borders and we have the experience and capability to carry out enforcement online, regardless of jurisdiction, platform or domain extension.
Our lawyers have industry-leading experience. We have successfully handled hundreds of matters involving the purchase, sale and recovery of domain names, including through negotiation, arbitration and litigation, and we regularly assist clients in removing infringing content from private, commercial and social media websites. Our clients trust us for our strategic advice and marketplace insights to protect their brands and content online, and to navigate the legal and regulatory risks associated with emerging platforms and technologies.
Given the nature and activities of internet trolls, cyber squatters and fraudsters, our seasoned lawyers are skilled in providing fast and efficient solutions to protect your intellectual property rights online.
Our services in this area include:
- investigating and removing infringing content and websites from the Internet
- strategic counselling for online brand protection
- recovering or cancelling infringing domain names
- negotiating the purchase and sale of domain names
- litigation
- due diligence on domain name and website ownership
- registering domain names, including in new gTLDs
- privacy law
- website terms and conditions
Key Contacts
Client Success
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Google Inc v Catherine MacDonald
DCA-1796-CIRASuccessfully recovered three domain names for the client containing its mark “Gmail”.Read More -
Optrex Ltd v Nameshield Inc
DCA-1612-ClRASuccessfully recovered the domain name optrex.ca in a domain arbitration proceeding.Read More -
Guitar Center, lnc v Piperni
DCA-1570-CIRAPrecedent setting case successfully recovering the domain names guitarcenter.ca and LAguitarcentre.ca for the client on the basis of reputation in Canada, without a trademark registration or any store...Read More -
Take-Two Interactive Software, Inc v iCity Corp - Domain Manager
DTV2013-0004Successfully defended the client’s domain name registration for gta.tv from an allegation of confusion with the trademark GTA (Grand Theft Auto) by establishing the meaning of the domain name is in fa...Read More -
Intact Financial Corp v Fagan
DCA-1450-CIRASuccessfully recovered the domain name greypower.ca for the client in a CDRP domain arbitration.Read More -
Intact Financial Corporation v WhoisGuard /Yenta's Bagels
D2012-1629Successfully recovered the domain name intactinsurancetoronto.com in a UDRP domain arbitration.Read More -
Compagnie D'assurances Belair Inc v Merab
D2011-0562Successfully recovered the domain name belairdirect.org in a UDRP domain arbitration proceeding.Read More -
Microsoft Corp v Guo
DCA-1211-CIRASuccessfully recovered the domain name windows7.ca in a CDRP arbitration proceeding.Read More
Unparalleled Expertise in Internet Law & Domain Names
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Who's Who Legal
Four leading trademark practitioners
2019Who's Who Legal: Trademarks
Related Publications & Articles
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Supreme Court of Canada denies Teksavvy Solutions Inc leave to appeal Canada’s first site-blocking Order
On March 24, 2022, the Supreme Court of Canada denied Teksavvy Solutions Inc’s application for leave to appeal a decision of the Federal Court of Appeal (2021 FCA 100), affirming the Federal Court’s d...Read More -
Domain name solicitation fraud – brand owners beware
It is a modern reality that with brand ownership comes the risk of trademark and domain name fraud. In this area, there has recently been a rise in email scams targeting brand owners by falsely claimi...Read More -
Down, but not out – initial adverse decision not a bar to future recovery of .ca domain name
A pair of recent decisions under the Canadian Internet Registration Authority (“CIRA”) Domain Name Dispute Resolution Policy (“CDRP”) demonstrate that a trademark owner who fails to obtain a domain na...Read More -
Beware of increasing use of confusing domain names for brand impersonation and fraud
The recent .CA domain name arbitration decision in Fluor Corporation v Fluor Curling highlights the growing problem of confusing domain names being registered and used to send e-mails impersonating bu...Read More -
What the amendments to the USMCA mean for Canadian IP law
On December 10, 2019, Canada, the United States and Mexico signed the Protocol of Amendment to the Agreement between the United States of America, the United Mexican States and Canada (commonly referr...Read More -
USMCA v NAFTA: What’s changed and what it means for IP in Canada
After more than a year of negotiations, Canada reached a new free-trade agreement with Mexico and the United States minutes before the midnight deadline on September 30, 2018.Read More -
Top 10 Highlights of Canadian IP Law and Practice in 2017
2017 was a year of significant developments to Canadian IP law and practice, with important court decisions and numerous legislative amendments. We have taken the opportunity to review the top 10 hig...Read More -
Supreme Court of Canada states “The Internet has no borders” in upholding global injunction in search results case
The Supreme Court of Canada issued its decision in Google v. Equustek, 2017 SCC 34, today, upholding an injunction requiring a non-party to an infringement action, Google, to remove links to infringin...Read More
Related News & Media
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Nora Labbancz presented with Education Foundation Award at IPIC 2020 Virtual conference
Smart & Biggar is pleased to share that Ottawa associate Nora Labbancz has received the IPIC Education Foundation Award in recognition of earning the highest overall mark in the 2019 Canadian Trad...Read More -
Smart & Biggar, “the leading IP boutique in the trademarks space,” ranks as Gold Tier for Canadian trademarks in WTR 1000
Smart & Biggar comes out on top with a ‘gold tier’ ranking for Canadian trademarks in the 2020 World Trademark Review 1000 (WTR 1000) – The World’s Leading Trademark Professionals.Read More -
Smart & Biggar’s trademark team joins colleagues from around the world at INTA
Smart & Biggar is pleased to announce that thirteen of our trademark partners, counsel and senior associates will travel to Boston, MA to attend the 141st International Trademark Association (INTA...Read More -
Smart & Biggar announces new Partner and Counsel promotions for 2019
The partners of Smart & Biggar are pleased to announce that Jeff Leuschner, a patent agent in the firm’s Ottawa office has joined the partnership.Read More -
Smart & Biggar lawyers head to New Orleans for annual INTA Leadership Meeting
Eight Trademark lawyers from Smart & Biggar will attend the International Trademark Association (INTA) Leadership Meeting from November 6-9 in the Big Easy — New Orleans, Louisiana.Read More -
Partner Mark Biernacki participates in the annual CAN-TECH Law Conference
Mark Biernacki, a partner in Smart & Biggar’s Toronto office, will speak on October 29th, the opening morning of the 22nd Can-Tech Law Annual Conference in Montreal.Read More -
Expert Guides lists eight Smart & Biggar lawyers in 2018 edition of the world's leading trademark law practitioners
Smart & Biggar is pleased to share that eight of the firm’s partners have been recognized as leaders in the field of trademarks law in the 2018 edition of Legal Media Group’s Expert Guides: Trade ...Read More -
Connect with Smart & Biggar in Seattle at INTA’s 140th Annual Meeting
Smart & Biggar will be represented in Seattle by fifteen of our partners and associates during the INTA Annual Meeting.Read More