The idea of using a trademark to protect your brand/domain name is not new. In theory it is fairly straightforward but in practice there are a number of issues to consider. The Internet is littered with businesses (you don’t need to be a business to register a trademark) which were created in the knowledge they were “unique”. Only to then fine their brand name has been trademarked and they could potentially lose their domain name. Unfortunately, some entrepreneurs look to benefit from existing trademarks. This is why protecting brands is priority for many large companies. These companies may have invested millions of pounds into their marketing and branding. Can you really blame them?
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Protecting brands with trademarks
Before we look in more detail about how and when you should protect your brand with the use of a trademark, it is perhaps worthwhile looking at what can and cannot be trademarked. In very broad terms, a trademark must be unique and can include:
- An amalgamation of the above
It is worth noting that a trademark cannot include:
- Offensive words or phrases/images
- Describe a generic product/service such as for example “accountant”
- Misleading information such as the word “eco-friendly” when the product/service is not eco-friendly
- Broad brush phrases which are not distinct. For example “We are the best” is too broad range while the McDonald’s phrase “I’m Loving It” is sufficiently distinctive
Branding and domain names
The US has a trademark service where successful applicants can roll out their trademark across the world. The European Union has a similar service which incorporates all member states. This leads us on to the potential problems for UK based businesses looking to protect their brands/domains with a trademark. What will happen after Brexit? In reality, the protection of trademarks, disputes and reconciliation will be no different after Brexit than it is today. The UK has its own trademark office and it is in the best interest of all worldwide trademark services to work together. This ensures that global companies feel comfortable and welcome in foreign lands. This also lets them protect their trademarks/brands, and enhances trading agreements across the globe. Protecting brands from actions such as domain hijacking and domain squatting can be time-consuming and in some cases expensive. If you have invested significant capital into your business, why not ensure the greatest level of protection available?
Choosing your perfect domain name
Web hosting companies offer not only web hosting services but also the opportunity to register domain names, and utilise domain privacy services. If you are setting up a business with a particularly distinctive brand name, logo, etc. then you need to ensure there are no identical/similar trademarked names or images already in existence. It is worth remembering that to infringe a trademark you don’t necessarily need to use the exact name/logo. Should someone prove that the structure of your business brand, name, logo, etc. takes advantage of a similar sounding existing trademark, you could be in trouble. In theory, it may sound like a good idea to piggy-back on a company like eBay with a similar service. However, many large companies have domain protection strategies in place. This alerts them of new domain names identical or similar to their trademark properties.
We have seen many instances where entrepreneurs have set up businesses, acquired websites, created marketing literature and marketing campaigns only to find out they were infringing an existing trademark. The trademark in question does not even need to be in use. Once registered, it makes no difference whether it is being used or not. Because the right to use that particular trademark is held by somebody else. While you can search for trademarks yourself using the Internet, it may be sensible to hire legal advisers and experts in this field to ensure there are no issues further down the line.
Domain registrar services
Historically, it was hard enough to keep up with similar sounding trademarked domain names with the original top-level domain (TLD) extensions such as .com, .net, etc. The introduction of new TLDs means there are now countless numbers of ways in which third parties can take advantage of branded/trademarked operations. The opportunity to participate in domain hijacking and domain squatting can be too tempting for many people. However, thankfully domain registrar services today automatically interact directly and indirectly with trademark bodies around the world.
Domain sunrise period
You may be aware that the Internet Corporation for Assigned Names and Numbers (ICANN) is a non-profit organisation which oversees all Internet domain names. This is the organisation which releases new TLDs and thankfully offers an array of protection for trademarks. So, if you have used a trademark to protect your brand and your domain name, how can ICANN help?
Register your trademark in the Trademark Clearinghouse
It is safe to say that many entrepreneurs would be put off pursuing a trademark simply because they deem it impossible to guarantee a suitable level of protection. In many ways this assumption is flawed because ICANN works closely with the Trademark Clearinghouse to introduce clear and definitive protection. To register your trademark with the Trademark Clearinghouse, all you need to do is supply evidence of the trademark and your interest will be recorded.
If a new application shows up for a trademarked domain name with a new TLD the applicant would receive a message from the Trademark Clearinghouse. This is a warning that completion of the application may result in legal action by the trademark owner. If the applicant still decides to pursue this route then the trademark/brand owner would be notified.
It is also possible for trademark owners to pre-register their trademark domain name with any new TLDs. Referred to as the “Sunrise period” this tends to range from between 30 and 60 days and relates to identical trademarks registered with the Trademark Clearinghouse.
Reclaiming your trademarked domain name
In the event that an applicant goes ahead with registration of a trademarked variation on your domain name, you have two options to reclaim that domain name. These involve lodging a dispute resolution with ICANN; known as a Uniform Rapid Suspension (URS) or a Uniform Domain-Name Dispute-Resolution Policy (UDRP).
What is a URS?
During the trademark reclamation period, the “Sunrise period”, the lodging of a simple URS regarding an application which is identical to your trademark (registered with the Trademark Clearinghouse) should suffice. You can either apply to void the infringing domain name or takeover registration. This is fairly straightforward, fairly quick and inexpensive.
What is a UDRP?
In the event that you have become aware of a domain name which infringes your trademark (outside the “Sunrise period”) you can lodge a UDRP with ICANN. This involves the creation of a panel that will hear your case and make a binding decision. In many cases it is relatively straightforward but to lodge a successful URS or UDRP you must be able to:
- Demonstrate how the identical or similar trademarked domain name could confuse your customers and devalue your brand name
- Provide proof that you own the trademark via an array of trademark bodies around the world or the Trademark Clearinghouse
- If a domain was acquired and there is evidence of “bad faith”, this can be enough to regain the domain. Bad faith is akin to domain hijacking/domain squatting where the main purpose is financial reward from the trademark owner
Domain squatting and domain hijacking
These two terms can strike the fear of God into entrepreneurs because many will know what is coming next. Whether fraudulently transferring a domain name, domain hijacking, or simply acquiring a domain which is unlikely to be used, domain squatting, the endgame is financial reward. There are ways and means of challenging these fraudulent activities via ICANN (as mentioned above). However, in some cases it may be just as easy to purchase the domain if it is relatively cheap.
One of the main problems when offering any form of payment to those undertaking domain squatting or domain hijacking is the threat they will come back for more.
If they can acquire or transfer more branded domain names with new TLDs before the trademark owner has taken action, the gravy train continues. So, you need to be very careful about how you tackle this potentially lucrative fraudulent activity. In some cases whether you really need to take any action. Don’t forget, as the domain name is trademarked they have a very limited buyers pool, i.e. you!
Do I need trademark protection for my domain name?
In a perfect world, when looking to build up a brand/company, you should have trademark protection and be registered with the relevant bodies. Successful trademark applications demonstrate that you have a unique brand which identifies you via words, images, logos, etc. If your company branding/name is relatively generic then you are unlikely to be successful with a trademark application.
In essence, a trademark is a reflection of the time, money and effort you have put into building your brand.
You can still protect your brand to a certain extent without a trademark. The problem is this may involve potentially expensive legal action which could drag on for some time. You would need to provide evidence that your brand has been copied or other parties are looking to benefit from your reputation.
It is sensible to consider all types of legal protection when building a brand name/company and acquiring domain names. Protecting brands is big business with many larger companies around the world employing whole departments to monitor brand-name infringements and take the relevant action. Sometimes a simple “desist and cease” letter does the trick of threatening legal action unless a site gets removed. The protection of trademarks in relation to domain names and TLDs is a worldwide issue. All trademark bodies around the world act together with ICANN having the power to reclaim and re-register disputed domain names. If you plan to grow your business, expand into different countries and rely heavily on your unique branding to attract customers, it may be worthwhile checking out trademark protection.