Protecting Your Domain Name Through Trademarks: How It Works
You’ve probably established why you should buy a domain name. It’s one of the most important things to think about when creating a website and building your brand. But, at this point, you must consider how to protect it.
In this post, we’ll tell you everything you need to know about trademarking your domain name so that you can establish your brand in the marketplace and avoid running into any trouble.
Once you’ve registered your domain name, it can’t be used as an address for another website. There’s nothing stopping another company or individual from setting up a business with this name, creating a similar domain name, or even trademarking your chosen name.
To protect your domain name, you must register it as a trademark in all the jurisdictions you currently work in (and those you plan to in the future).
What Is a Trademark?
A trademark is a symbol, word, or phrase that’s been registered legally, protecting it from being used by others for profit. It identifies a product or service, distinguishing it from others. Individuals, businesses, or any other legal entity can own a trademark.
How Are Trademarks and Domain Names Related?
A trademark needs to be registered in each country you want your product or service to be protected. For example, a company that provides businesses with UK toll-free numbers should be registered in the UK.
When considering how to name your business, it’s a good idea to look at what domain names and trademarks are already registered. Creating a domain name using a trademarked word or phrase is called trademark infringement.
If a company finds that you’re using their trademark (or something too similar), they can sue you or your company. This could lead to criminal penalties. Equally, when naming a business or registering a trademark, you should check to see if similar domain names have been taken. In the case that a website pre-dates your trademark, you have no legal rights.
Why Trademark a Domain Name?
Registering a domain name doesn’t automatically give you ownership of the name or phrase you’ve used. To own the intellectual rights, you must also register it as a trademark. For example, Private Internet Access (PIA VPN) was able to protect their domain via trademark, which means their company and domain name can’t be duplicated.
Registering your domain name as a trademark also prevents people from using a similar name. This could be innocently done by an unrelated company or intentionally for financial gain. Competitors may do this to mislead your potential customers, or you could be a victim of cybersquatting.
For example, to mislead potential customers, competitors to NetSuite, an integrated cloud business software suite, could register similar domain names, such as netsuit.com or nettsuite.com. Then redirect that domain name to their own site. If NetSuite is trademarked (which it is), the owner could request that those websites be transferred to them.
Cybersquatting is when domain names that are the same as or similar to existing brands or trademarks are bought before the trademark owner has had the chance to purchase them. This is usually carried out with the intention of selling domain names back to the owner for a high fee. Under the Anti-Cybersquatting Consumer Protection Act (“ACCPA”), people that attempt this can be sued for trademark infringement.
Just as understanding CVSS can help you ensure your business software is better protected online, trademarking your domain name means that your company image is protected.
How to Trademark a Domain Name
Just because you own a domain name doesn’t mean you can register it as a trademark. It has to meet certain criteria, and it can’t be too similar to another trademark.
Choosing your domain name can be difficult. But if you’re planning on protecting it as a trademark, you must ensure it’s suitable. Our top naming tip is to go for something distinctive. Many trademarks are words with no prior meaning, such as eBay.
Your trademark is likely to be denied if you use common verbs, names, or locations. For example, if you are setting up a business that offers different types of functional testing, something as simple as functionaltesting.com wouldn’t be likely to be trademarkable.
Equally, if you work in app development, a name like DevOps or softwaredevelopment.com would be far too generic. You should instead try to encapsulate your specific brand.
The Registration Process
Registering a trademark works on a national level, so you may have to register multiple if you work internationally. It’s essential to register your trademark initially in the country where your business is based, as you’ll want to be protected as soon as possible.
If you plan to expand internationally, you may want to use The Madrid System, where you can apply to register your trademark in multiple countries at once. The Madrid Union has 112 members, which covers 128 countries, including the USA and the UK.
Whichever jurisdiction you’re registering your trademark in, the process remains mainly the same:
- First, you have to decide on your trademark. Do you want it to be your brand name or the whole domain name? Some companies include the whole internet address, including the .com, .co.uk, etc.
- Next, it’s a good idea to search for similar trademarks. One of the main reasons your trademark may be rejected is that its similarities would cause confusion with other trademarks.
- You then have to specify what goods and/or services your business provides. This is important, as your trademark will only cover what you’ve included in your application.
For example, if you were to trademark your communications software, you would need to include a list of all your offerings, from your VoIP phone system to your instant messaging capabilities. You wouldn’t need to go quite so far as to provide a VoIP definition, but identifying all of your services is a must.
- Finally, depending on which country you’re filing in, you need to complete the correct forms and send them to the appropriate office along with the required evidence. This can usually be completed online.
There are many different reasons for domain name disputes. Some can be resolved easily when the businesses involved are able to reach a mutual understanding. Others may need to be settled legally, which is why it’s important to protect your domain name.
Chosen Name Already Registered
In this case, there isn’t much you can do if you didn’t trademark your chosen name. If someone gets there first, the only option is to offer to buy the domain name from them.
As we mentioned earlier, this is a crime that affects businesses worldwide. A cybersquatter aims to prevent you from getting your domain name back or to make you pay exorbitant prices to retrieve your name. But if you can prove that the domain name has been purchased with malicious intent, you should be able to get it transferred back to you.
You should first contact the owner directly to inform them that their name infringes on your trademark. Keep a call log and save any emails or messages. If you have to go down the legal route, you need evidence that you’ve tried to inform the trademark owner.
In this case, it would be best to seek advice from a lawyer specializing in trademark law. You may also want to consider alternative dispute resolution, such as mediation. The World Intellectual Property Organisation (WIPO) has an Arbitration and Mediation Center that deals with IP and technology disputes.
Domain Name Containing a Trademark
If you include a trademark you don’t own in your domain name, even unintentionally, you could be sued for trademark infringement. At best, you’ll be told to take the website down. At worst, you could face charges.
Businesses With Similar Names
With global businesses in all industries having their own websites, similarities in names are inevitable. You may register your trademark only to find a business in a different sector using a similar domain name.
This could also include parody and mocking websites. They’re all fun and games until someone gets in trouble. If you’re showing a business in a bad light, and they can prove financial loss, you could be sued for damages.
Example of Domain Name Trademark Cases
Here are some recent examples of cases from the WIPO Arbitration and Mediation Center:
In April 2022, New Balance, a major sports footwear manufacturer, disputed two domain names: ‘nb-india.com’ and ‘nbshoesindia.com’. Both domain names were transferred to them after the panel decided they were being used in bad faith.
In February 2020, Groupon, a global e-commerce marketplace, disputed that the domain name ‘ggroupon.com’ was confusingly similar to their trademarked name. As it was proven to be registered and used in bad faith, it was ordered that the domain name was to be transferred to Groupon.
Protecting Your Domain Name
Registering your domain name as a trademark not only gives you more protection but also makes it more valuable. Your domain name and trademark identify your business and strengthen your brand’s market presence.
A trademark gives you legal rights over your name in the country it was trademarked. It’s smart to look ahead and trademark your domain name in any country you operate within. But you must seek legal advice if any disputes arise.
Tanhaz Kamaly – Partnership Executive, UK, Dialpad UK
Tanhaz Kamaly is a Partnership Executive at Dialpad, a cloud-based business communications platform that turns calls into the best opportunities with features like 3-way calls. He is well-versed and passionate about helping companies work in constantly evolving contexts, anywhere, anytime. Tanhaz has also written for Corporate Vision Magazine and Track-POD.
Check out his LinkedIn profile.