Learn why domain name trademarks matter, how to register them and navigate the minefield of legislation successfully.
Introduction
Trademark laws are pretty strict – you can’t make a website called Fasebook, or Meta would be upset with you. In a legal sense.
… Right?
We’re going to clear up all the confusion. In this guide, we’ll cover the delicate details around trademark law when it comes to domains. Or in other words, we’ll explore how you can use trademark laws to your advantage, and avoid getting caught out by those same laws in the process.
First, we’ll go through some basics, including what both trademarks and domain names are. We’ve got to make sure we’re all on the same page.
What’s the Difference Between Trademarks and Domain Names? Starting With the Basics
So, it’s important to get all the basics down first. You can’t build a house without a foundation, so think of this as your foundation of knowledge on the subject of trademarks and domains.
So, in the interest of keeping things clear, the first question is:
What is a trademark?
Trademarks are usually the name of the business or a symbol, phrase, or words that represent such business. It doesn’t have to be the name, though that is the easiest way consumers or potential customers can find and identify you.
One of the first steps to creating a presence is registering a trademark, which protects other businesses or cybersquatters from changing your brand identity. It’s kind of like sticking your flag in the ground and saying ‘this is mine, no one else can have it’.
Only it’s got legal weight.
Okay, so what is a domain name?
If you’ve been browsing the Internet since Web 2.0, you would probably have heard of a URL. Well, a domain name is essentially the URL that users have to enter to access your website. Think of it as an online address, equivalent to the physical addresses that your Amazon parcels are delivered to.
It is crucial that businesses create an easy, memorable domain name so that potential customers can simply type it in to get to the website. We wouldn’t want to be typing things like ‘small-local-business-2-next-to-road.com’ – I’m sure most of us would give up before we even get three words in. Who wouldn’t rather type ‘artsUK.com’ and get there straight away? Many domain names are similar or identical to the trademark so that customers remember and automatically link them together.
Hopefully, that answers all questions about what is a domain.
Can a trademark and a domain name be the same?
Yes, they can. Actually, they often are – this helps with that whole ‘brand identity’ business. You’d expect that, for example, the brand Dr Martens would own the trademark for their brand name, as well as the matching domain.
There are also cases where the trademark and domain are just similar. This might happen if your ‘perfect match’ URL has already been claimed and trademarked or copyrighted. In that case, you may have to settle for a similar URL or a .net instead of a .com.
Should You Trademark Your Domain Name? What’s the Point?
We’re not saying that trademarking every domain name is worth it or even a good idea. Very niche domain names are very unlikely to be in demand, for example. And sometimes, you just want to use a domain for a non-commercial purpose.
But broadly speaking? Trademarking your domain name can be a great idea.
For one thing, it makes it much harder for others to claim they’re you. Your customers will know you’re the only owner of a particular domain, which improves trust and helps them avoid scammers.
Another point in favour of trademarking your domain name is avoiding the consequences of not doing that.
What can happen if you don’t trademark your domain name?
We’ve already mentioned scammers, but they’re worth bringing up again. Picture this: your elderly relative wants to find your website for fun news articles, ‘The Funtime Times.’ You haven’t trademarked it because what’s the worst that could happen?
They accidentally click on one called ‘The Funtime Tines,’ which tells them they need to enter their card details to access your articles. And once they do, those details are used for nefarious purposes.
That’s a potential consequence of not trademarking your domain name. You might lose customers, and that’s if you don’t run into legal trouble first. Or someone else could see you doing well with your domain, swoop in, and trademark it, costing you access to your hard-earned success.
What to Know Before Picking a Domain Name Trademark
As it turns out, choosing a domain name is only half the battle. You can’t just throw a dart at a map and see where it lands, so to speak – you’ve got to think long and hard.
And since that takes time, we’re here to help you speed things up.
Focus on the following factors (wow, that’s a lot of Fs), and you’ll be good to go in no time.
What types of domain names can be registered as trademarks?
The key thing here is originality and distinctiveness. Your domain name brand must not be used by anyone else, and is easily identifiable in terms of what’s being sold. You can do a quick trademark search online.
The domain name needs to be unique and reliable, so they are not confusing for users trying to find the right business. At the same time, you have to avoid being generic. If you are making bottles, avoid trying to register the domain name bottles.com as a trademark, as that is not original, distinguishable, or reliable. You might use your distinguished brand instead, such as chillys.com, for the Chilly’s bottles.
In a legal sense, you will have to register for the domain name trademark ownership either in your country, or at a global level. This means no one else can use your domain name or the trademark.
For example, Uniqlo is a clothing brand, and their domain name is uniqlo.com, which is also registered as a trademark – simply so their brand identity is protected and no cybersquatters can pretend to be them by having ‘uniqlo-clothing.com’ without facing potential lawsuits.
How much does it cost to trademark a domain name? We talking big bucks?
Not at all. Well… it depends on what you mean by big bucks. A small fee for one could be a large one for others, and the world needs to be more compassionate.
Anywho, the fee is £170 for an online application and £200 for a paper one. For an international one, that is £40 plus any fees deemed necessary by the World International Property Organisation (WIPO). Luckily, you can use this online calculator to get an idea of how much the WIPO fee could be.
When does a domain name affect trademark rights?
As we are using the Internet for different capabilities, here comes more complex issues to do with rights and intellectual property.
Ok, so you’ve spent ages researching and selecting a domain name. That’s great. Then at some point down the line, someone has the brilliant idea of trademarking the name before you get to it. Legally speaking, you have the right to the domain name until the agreement expires or until you want to sell it.
So, if you own the domain name, you can technically agree on a deal to sell the name to the trademark owners. As long as you didn’t do it on purpose.
So when does a trademark affect domain name rights?
On the other hand, a trademark that already exists can impact domain name rights.
Say, you came up with the domain name wheels-in-motion.com to advertise your wheel company, called ‘In Motion’. But there is already a trademark that exists as ‘Wheels in Motion’ for another business, only that their domain name is wheelsinmotion.com.
If the domain name trademark is in use, then you would probably not be able to use the domain name as the existing company has already trademarked it and protected its own business against any other brand competitors or identities.
Can I claim a domain name trademark for future use?
In theory, sure. You’re welcome to trademark as many domain names as you want – the only trouble is that even cheap domain name trademarks quickly add up when you hold onto them for ages.
Our advice? Trademark domain names for the future, absolutely, but only the ones you’re already concretely planning to use.
If your plan boils down to ‘well, it would be nice to do this someday,’ save yourself the money and trouble. If it’s a detailed multi-step plan that just needs more funding or more partners, then by all means, go for it.
How to Search For a Domain Name Trademark: Let’s Do This
Step 1 is, of course, to know exactly what you’re trademarking. What’s your brand identity? What’s the first thing customers should think of when they see you? Do you use any acronyms or other shortcuts?
Jot down the answers to each of these questions, then start brainstorming.
It’s always a good idea to come up with a long list of prospective domain names rather than getting attached to just one. This helps you keep an open mind and see the potential in multiple names, even if some have already been claimed.
It’s also worth remembering that if you’re an established business, your domain name should be as close as possible to your business’ name. You’ll likely have trademarked your company’s name, which may help you secure your dream URL.
But how do I know if a domain name is trademarked?
Thankfully, you don’t have to just guess and hope for the best. You can harness the power of AI and deploy a bot to check whether the domain you’ve thought of has already been claimed.
The best part is that these tools can trawl millions of sites in the time it takes us to blink. That means if your bot says the domain name is free, everyone else is likely to agree.
How to Seize a Domain Name Trademark: Tie It Down
Once you’ve pinned down a domain name you’d like to own, you’ll want to waste no time in ‘tying the knot’ and marrying your idea. Only instead of an engagement ring, you’ll have to… tie it down? The analogy only goes so far.
But the process, thankfully, isn’t too hard. You’ll want to move straight into trademarking the domain name before someone else thinks of the same thing. All you have to do is follow the steps set out below.
How Do I Register a Domain Name Trademark? 7 Simple Steps
- First, you’ve got to make sure that your domain name is compliant with government regulations about trademarked terms – so no profanities or hate speech.
- Next, complete your application, which you can download on the government website.
- You’ll also have to pay the mandatory trademark registration fee at this point.
- After that, you’ll submit your finished application form, which you can do online or by post (online being quicker).
- The IPO will then check that you can trademark the domain name you’re after.
- That’s it. The whole process can take up to four months in total.
- If you want to register your trademark internationally, you’ll need to complete a separate application and submit a separate form.
How to Avoid Domain Name Trademark Infringement: Sidestepping the Hassle
Always remember – first come, first served. A thorough domain name trademark search before you hitch all your hopes on a particular name helps you avoid future heartbreak and/or hassle.
You’ll also want to be very strict with yourself in terms of timing. As soon as you’ve got a domain name in mind, trademark it like someone’s racing you for the right to that trademark. After that, pay any fees you owe immediately at all times.
This lets you avoid most any domain name trademark violation, or at least get the domain name trademark law on your side.
Can you get sued if someone trademarks your domain name?
No, because you owned that domain name first. As we looked at in the examples above, you are not legally in the wrong if you own a domain name that someone then trademarks. However, if you own a domain name with someone’s trademark in it with the aim to misuse the domain name, you can get sued.
For example, there have been cases where people buy up all domain names related to the trademarked business in hopes of profiting off the current business by falsely claiming to be the business. This is called domain name trademark infringement.
Or, they buy it up to sell it to the trademarked business at a much higher price. This kind of misuse can lead to domain name trademark infringement cases and disputes. In those cases, the court may order them to forfeit all the domain names.
Difficulties in getting trademark law protection
Firstly, you have to fully understand the responsibility you have in getting trademark law protection. There are procedures in place to support you, but you’ve got to actively reach for them – there’s no such thing as trademark police who do random checks of URLs that sound similar to trademarked domains.
There’s also the trouble of there being tons of businesses online. This can make it really hard to prove that someone’s infringing on your copyright.
For example, there are only so many ways in which you can say ‘we’re the best battery supplier around’. Your URL might be best-battery-supplier.com, but the owners of top-battery-suppliers.com aren’t necessarily trying to take your trademark. They just need to say the same thing as you, and you can’t often sue them.
Managing Domain Name Trademark Disputes: In Hot Water?
The same domain name trademark rights that protect you if you’re the copyright holder can work against you if you’re the one stepping on someone else’s toes. This is important to remember as you look at trademarking your domain.
Hopefully, most of your disputes will be about other people trying to dispute your claim to your domain, not the other way around. We’ll assume as much going forward as we look at two of the most frustrating types of hot water you can find yourself in.
What is cybersquatting?
This is like the virtual version of squatting in a property, when someone starts living in a (presumably vacant) place that doesn’t belong to them.
Cybersquatters ‘hog’ domain names in the hopes of making a profit off them. They often register and/or traffic those names, though they may also simply use the name without trademarking it. This can create problems when someone else pays to claim a domain name trademark.
If you’re dealing with cybersquatters, remember that you can sue them. You can also have your case arbitrated, which is a cheaper option.
What is domain spoofing?
Remember when we talked about scammers tricking your grandparents into clicking on fake websites? That’s what domain spoofing is all about.
Let’s say you’ve trademarked the domain ‘CutestStressBalls.com.’ A scammer might set up ‘CutieStressBalls.com’ or ‘CutestStesssBalls.com’ to look just like yours, with the intent of stealing people’s hard-earned money. And as if the theft part isn’t bad enough, they’re also dragging your name through the mud.
If you find these kinds of spoofs, you’ll have to get the authorities involved so the sites can be taken down. Ideally, you should also take legal action against the fraudsters.
Allow Our OnlyDomains Support Team to Guide You Through the Domain Name Trademark Minefield
If all of this information is making your head spin, you’re not alone. Everyone has to start somewhere, and we’re not ashamed to admit that this stuff is tricky.
That’s why we suggest reaching out for help and enlisting our experts.
We know all the domain hacks you need to get the perfect domain name safely registered under your name. We also know how to avoid any legal loopholes that could cost you down the line, which means you get to kick back and relax as we handle all of it for you.
Interested? Give us a try at OnlyDomains and see for yourself how we can help you sort the whole trademark business out in the blink of an eye.
