The issue surrounding the acquisition of domain names and trademarks is a complex one. Naturally, you would assume that once you own the trademark for the phrase, its corresponding domain name is automatically yours. It is not as straightforward as that because in many instances you will have to already own the top-level domain to exercise rights over it and not have it because you have a registered trademark for it. Your rights over the domain name will be dependent on a lot of factors.
Of course it follows naturally to want to get a trademark once you have registered your business. Acquiring a domain name for your business is a great thing and owning a trademark for it sounds great as a way of protecting your business and growing your brand. It provides you with the legal backing in case there has been a copyright infringement on your domain name. But for a lot of businesses, it is seen as either unnecessary or impossible to achieve. Acquiring a domain name and trademark for your business isn’t a simple venture and you need to know how to get your way around. Here are all you need to know about them and how to make more informed decisions.
When does a domain name qualify as a trademark
A domain name is a unique name that designates a particular IP address. Without it, it would be impossible for a user to access your website. This includes both the name and the domain name extension. But a domain name is much more than an address used to find you online because sooner, you find that it will be closely associated with your product and services and become part of your branding effort. This is one of the reasons choosing one is not easy.
That way, you see why a domain name can easily qualify as a trademark (a word, phrase, logo, symbol, device used in identifying a business or organization). But there are criteria a domain name needs to meet before one can also acquire a trademark for it. For instance, it is highly unlikely for a generic or common name to qualify as a trademark even after it has been acquired as a domain name. Generally, a domain name has to be distinctive or just gain a particular distinction as a result of being applied to its product or service. Also, if the product or service is the first instance where the owner used the domain name, then it can qualify to be registered as a trademark.
How do I check if a domain name and a trademark are available
Domain names are unique, which means that to acquire one, you need to first determine whether it is available or not. To do that, you can easily do a search on any ICANN approved domain name registrar. The ICANN website holds the names of all its approved registrars and their website so you can run your search. However, if it turns out the domain name you want to acquire is unavailable, you can get in contact with the owner. Chances are the owner is a cybersquater which means they acquire domain names so they can sell them off at a jacked price (they are also referred to as domain flippers).
You can acquire it by either suing them or letting ICANN resolve it. While Whois.net will supply you with name and details of the owner of a domain name you want, some of these cybersquaters will supply fake details and that will just be a deadend and there will be nothing you can do then. Many businesses would want to use their intended trademark as a domain name for branding purposes but if it turns out to be unavailable, you shouldn’t worry much.
Registering a domain name trademark
If after your search it turns out that a domain name is available and has no trademark protection for another business, then you can go ahead and register it. A domain name registrar will do that for you or a reseller. But preferably use a registrar as sometimes it is difficult contacting a reseller when you need a renewal. But it is common to find unaccredited domain registrars around which is why you will need to get on the ICANN website to access the list of registered ones and have your domain name registered. You will, however, pay a fee which will be renewed annually.
Depending on a few factors, you can get a trademark protection for the domain name in which case you will enjoy more rights over it. But if that won’t be the case, you can still register your domain name which will mean no one else can use it only that the right to own the domain name will not prohibit other businesses from using it from doing business. For instance, if your domain name is mountainchopper.com, any other business can use “mountain choppers” for ads, only not as a domain name.
The issue of acquiring a domain name and being protected legally has been debated for long especially when in relation to protecting freedom of expression and at the same time protecting intellectual property. The issue is all the more compounded with newer top-level domain names making their entry into the market.
Acquiring an expired domain name
An expired domain name doesn’t usually come to the public immediately it expires. There is usually a grace period followed by a redemption period. The grace period can last between 2 weeks and a year depending on the registrar and the domain extension in question. The grace period for a .com domain is usually shorter than say a .uk. After that, the registrant can renew it during the redemption period with a redemption fee and the renewal fee. If they don’t, the domain name can be auctioned out to the public and you can acquire it then.
Resolving domain name conflicts
It is not enough to register a trademark. One can register a trademark and still can’t prohibit other businesses from registering a domain name of it. The circumstances that guide resolution of issues that arise between domain names and existing trademarks are a bit tricky. But some parts are straightforward. If it is found that a domain name used in some way tarnishes the image of a well recognized trademark, the trademark law can prohibit the owner of a domain name from using it especially for commercials. But even this is not so self-evident in all cases. Also, the use of a domain name can be prohibited if it is owned by a company that engages in a similar product or service as does another company that own the trademark being violated by the domain name in question.
However, if a cybersquater registers a trademark domain name with the intention of selling it off in the future at a much higher price, the above conditions won’t apply. Instead, you can have them sued under the Anticybersquatting Consumer Protection Act. But it is usually faster and less expensive to go about this through ICANN as most courts rulings in such cases tend to favour the trademark owner (the cybersquater).
In some cases, it won’t be only one domain name registered by someone in bad faith. It is common to find the domain name registered in multiple jurisdictions. In such a case, it is recommended you prioritize as a way of dealing with it since you might not afford to retrieve all of them. What you do is to focus on the one from an area you intend doing business in the future.
What should you consider when acquiring a domain name and trademark?
There are compelling arguments for why you shouldn’t trademark your domain name as much as for why you should. But trade-marking your domain name is important in order to protect your business. You can lose your business because of it. This usually happens when a website with a similar product or service and domain name begins to confuse your customers. The number of traffic redirected from your website to theirs can be crippling. In other cases it can be embarrassing for your brand depending on the kinds of product and services they are rendering and what yours are. In such a case, acquiring a trademark also for your domain name will give you more rights over it and help protect your image and business generally.
However, sometimes, trade-marking your domain name can land you in some trouble. If without thorough research, you register a domain name that has been registered by another company, it can attract a lawsuit that come down to thousands of Pounds. Although, there are resources available with which you can check of a certain domain is already trademarked. But you should bear in mind that if you register a domain name and don’t trademark it without also selling any product or service, any other company can use it. You can use the services of sites like https://www.freeparking.co.nz for trademark claims and domain names.
These ought to get you started in acquiring a domain name and trademark. Understanding the relationship between the two is a good way to protect your brand and business. Therefore, it is crucial you take your time to understand the dynamics before getting one.
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