Domain Names and Trademarks are Not the Same - Why Having a Domain Does Not Stop People From Using Your Brand
The first thing many people think about when it comes to a company’s online presence is the domain name. It is undeniably important to own the most direct and official sounding domain name for your business to help legitimize yourself in the marketplace. When you pick a name for your business, checking the availability of a domain name and securing it are the first things you should do.
However, just because you have the “.com” you want does not mean that you have the protection you need for your business name. Instead, to protect your name and overall branding, you have to lean on trademark law. While you have some protection through the use of the name, obtaining a federally registered trademark is the absolute best way to stop others from taking your name and branding.
Plus, while having a domain does not protect your brand or your trademark, having a registered trademark can help you in a domain dispute.
What is a Trademark?
A Trademark is a word, name, symbol, or device used in commerce to indicate the source of goods or services, distinguishing them from the goods and services sold or offered by others. A federally registered trademark gives you a number of rights, including:
Exclusive rights to use the mark for goods or services
Ability to use the ® symbol to let others know that you are claiming exclusive rights in the mark
Ability to enforce against infringement by filing suit in federal court
Use as a basis for registration in other countries
Value when pursuing domain name ownership and domain name infringement, as discussed in more detail below
A trademark gives consumers the confidence in the source of the goods and services provided. As you can probably tell by now, having the combination of a URL name and a trademark can be enormously valuable to your business. Nobody will be able to use the same name or anything similar that could cause confusion between your name and another.
Additionally, note that it is not necessary to register the “.com” section of a domain name in a trademark in order to have protection. For instance, a registration for NIKE will also protect “Nike.com,” but a registration that includes the “.com” would not give as much protection to the term without it.
Uniform Domain-Name Dispute-Resolution Policy
As noted above, having a federally registered trademark can greatly help in a domain-name dispute. All domain registrars must follow the Uniform Domain-Name Dispute Resolution Policy (UDRP) established by the Internet Corporation for Assigned Names and Numbers (ICANN). Under this policy, trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name.
In order to enforce ownership rights in a domain through the UDRP, a trademark owner should either file a complaint in a court of proper jurisdiction or, in the cases of abusive registration, submit a complaint to an approved dispute-resolution service provider. In order for a complaint to succeed, the trademark owner must establish that: The infringing domain name is identical or confusingly similar to a trademark, the registrant does not have any rights to the name, and/or the domain name has been registered and is being used in “bad faith.”
Having a registered trademark is essentially a requirement in order to win such a dispute. Therefore, the best way to protect a domain name is to protect the term through federal trademark protection.
When considering your business name and domain, the following are best practices:
It is important to search and vet every potential business name to ensure that your preferred domain name is not being used and that it is not federally protected
You should pursue federal trademark protection when available for your domain name
Monitor others use of your trademark to police against infringement