IP FAQs & Reference – Details
Domain names (FAQ)
What is a domain name and how to choose it?
At its simplest, a domain name is a string or sequence of characters identifying a section of the Internet, usually the address for accessing a website via a web browser.
Ideally, a company or an individual will choose a domain name which is easily identifiable and easy to remember. Domain name addresses help connect computers and people on the Internet. Because of their marketing and advertising function, domain names have become business identifiers and increasingly even trade marks in their own right - for example, lastminute.com. Indeed, just as trade marks are used to indicate the origin of goods or services in the “real world”, domain names perform the same function in cyberspace.
Domain names are an important consideration and integral part of any intellectual property portfolio. Just as a trade mark is used to distinguish and identify the goods or services of one trader from those of others in the 'real world', a domain name performs this function on the Internet.
We can register your domain names not only as domain names but also as trade marks. For major brands, or where business is anticipated over the Internet, domain names should be cleared and registered in parallel with trade marks.
When filing an application to register a domain name as a trade mark the qualifier .com, .co.uk etc, is not taken into account when the UKIPO is carrying out similarity comparisons against earlier trade marks, since it is only the individual identifying element in which exclusive rights are granted.
Who owns a domain name?
The legal owner of a domain name is referred to as the ‘registrant’. Sometimes, a registrant will own the legal title to a domain name on trust for the benefit of a third party.
What is a ccTLD?
A ccTLD is a country code top-level domain, for example .de for Germany. CcTLDs are administered independently by nationally designated registration authorities.
Domain names as trade marks
As so much business these days is now done over the Internet, many companies will choose a domain name that reflects their existing trade mark. The domain name is then easily identified and will attract business and potential customers to the website, relying on the goodwill already generated in that name as a trade mark in the “real world”.
D Young & Co can assist you in registering your trade mark as a domain name.
If you trade on the Internet under a specific domain name (such as lastminute.com or amazon.com), it is likely that your domain name is functioning as a trade mark in its own right. The UK (and many other) Trade Marks Registries now acknowledge that domain names can be trade marks and D Young & Co can assist you in registering these before the UK and other Trade Marks Registry in the normal way.
Of course, if you apply for a trade mark then the domain name must pass the relevant standards to qualify for trade mark registration. For more information see the D Young & Co Trade Marks Primer (see linked resources, right).
If you do not yet trade on the Internet but have an existing trade mark in use in the “real world”, you may wish to consider registering a domain name that reflects the trade mark you use. This will allow for ultimate trade on the Internet or, for example, as web page information regarding your products and services. In addition, it is important where a reputation has been established in the “real world” to ensure that the name is not hi-jacked by third parties on the Internet often known as cybersquatting.
Cybersquatting and dispute resolution
We are experienced in dealing with cybersquatters and can represent you in dispute resolution procedures, which are handled by the Internet Corporation for Assigned Names and Numbers (ICANN) and Nominet. We have a high success rate dealing with such complaints.
Case law under the major dispute resolution procedures is now firmly in favour of the trade mark owner in cases of cybersquatting and dispute resolution procedures have become established as a quicker and more cost effective alternative to litigation. Remedies available include the transfer or the cancellation of the cybersquatting domain name.
In addition, we are often able to secure the anonymous transfer of a domain name through intermediaries at low cost.
Domain name watching
Once your domain name has been registered, we recommend that a domain name watching service is set up. This service alerts you when third parties attempt to register domain names which reflect their existing trade marks, or are confusingly similar to existing trade marks in an attempt to disrupt legitimate business activities.
It is clear that domain names should be an important consideration and integral part of any trade mark portfolio. For major brands, or where business anticipated over the Internet, domain names should be cleared for use and registered in parallel with trade marks.