Introduction to Domain Names
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.
Cybersquatters 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.
Displaying the registered design number
Most companies choose to display the UK or Community registered design number on their product and associated packaging or marketing literature, so as to warn competitors that the product is protected.
The product might actually be protected by a number of different registered designs, with each one being focused on a different aspect of the visual appearance. For example, there could be one registered design directed to the overall shape, another directed to the attractive pattern that is printed on the product, and another directed to an icon or menu that appears intermittently on the screen of the product when it is being used.
A UK or Community registered design has a maximum duration of 25 years from its filing date, subject to being renewed at five year intervals by paying an official renewal fee to the UK or Community Designs Registry by the 5th, 10th, 15th and 20th anniversaries of the filing date.
Registered design infringement
A competitor will infringe if they produce a product which uses the same design as your registered design, or which uses any design which does not produce a different overall impression on the informed user. This means that the competitor should not escape being liable for infringement merely by making trivial changes to the registered design.
If you own the registered design but do not produce the product yourself, you may wish to consider selling (assigning) ownership of the UK or Community registered design to a company that is interested in buying it, or else licensing use of the registered design to that company.
The other side of the coin to considering applying to protect the design aspects of your newly-developed product is to consider whether aspects of the design of that product will infringe third-party registered designs that have already been obtained by your commercial competitors.
It can be wise to conduct a precautionary clearance search through your competitors' registered designs on a country by country basis in the countries where your own new product may be manufactured, marketed or used. Conducting clearance searches through registered designs is not a precise science, but the searching that can be done can at least provide some reassurance.
In the UK, it is possible to perform a clearance search to some extent against existing UK registered designs, because the UK Designs Registry will perform this service. Unfortunately, there is no analogous arrangement that applies to Community registered designs, and instead a commercial searching service would have to be used. What searching facilities are available in other countries would require consultation with local design attorneys.
Unregistered design rights
Generally speaking, unregistered design rights are a glorified form of industrial copyright and come into existence (or subsist) automatically when a design is first created.
Unregistered design rights are of narrower scope than a registered design because infringement requires that there should have been a chain of knowledge in the copying of the original design through to the design of the allegedly infringing product. This is not the case with a monopoly right in the form of a registered design, where it is irrelevant as to the history of the design of the allegedly-infringing product, as infringement is assessed on a side-by-side comparison basis between the registered design and the alleged infringement.
New product design should avoid infringing existing unregistered design rights belonging to third parties, such as your commercial competitors, by designing by an independent design process that you have documented (to establish its independence) without being tainted by knowledge of your competitors' earlier relevant designs.