Why Having a Domain Won't Stop People From Using Your Brand
The important difference between trademark and domain names
The first thing many people think about when it comes to a company’s online presence is the domain name. But while it is undeniably important to own the most direct and official sounding domain name for your business, it won’t do much to help you stop anyone else from using your brand. Instead, to protect your name and overall branding you need the benefits of trademark protection. While you have some protection just through use, obtaining a federally registered trademark is the absolute best way to stop others from using 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.
Trademark Basics
A trademark is a word, name, symbol, or device used in commerce to indicate the source of goods or services and to distinguish them from the good and services sold or offered by others. Basically - it’s how you protect your brand and the main elements of your brand. A federally registered trademark gives you a number of rights including:
Exclusive rights to use the mark for the goods or services with which you are using the mark
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
Can be used as a basis for registration in other countries
Can be valuable 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, having the combination of a URL name and trademark on the name 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
While a domain registration won’t help much in a trademark dispute, 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 that the domain name has been registered and is being used in “bad faith.”
Having a registered trademark is essentially a requirement to win in such a dispute. Therefore, the best way to protect a domain name is to also protect the term through federal trademark protection.
Takeaway
When considering your business name and domain, we recommend following best practices:
You should search and vet every potential business name to ensure that your preferred domain name is not being used and that it is not registered or being used as a trademark.
You should pursue federal trademark protection when available for your brand or domain name.
Do what you can to monitor use by others of your mark to police against infringement
If you need help with protecting your trademark or enforcing against infringing trademarks or domain names contact Scott Brown at 614-340-0011 or here.