Why it is important to have a strategy for protecting domain names

As most people know, domain names are separate from trade mark rights, and registering a domain name does not give you any right to use a particular term or prevent others from doing so. However, it makes sense for all brand owners to have a domain name strategy, which should be informed by your trade mark strategy. Securing an important domain name early can avoid significant costs further down the line.

The first rule of domain names is that you can’t hope to secure every possible relevant variation. There are over 2,000 top-level domains (TLDs) available on the internet, including country code top-level domains (ccTLDs) and generic top-level domains (gTLDs) such as .org and .com. This number is constantly changing as new TLDs are released and others expire. The mere existence of a registered domain name that is identical or similar to your own brand is not necessarily a risk to your commercial activities, but if such a domain name is used in a way that diverts your customers to a competitor, or could damage your reputation, there is a reason to take action.

Depending on the jurisdiction, there are some very effective domain name dispute resolution mechanisms in place. That means that where a domain name is clearly being used in bad faith or in a way that is damaging to your business, it is often possible to take action to prevent that and sometimes even to obtain control of the domain name in question, provided you have appropriate registered trade marks or provable earlier rights. However, such procedures always involve costs that cannot be recovered.

What to register?
Ideally, your domain name registrations should mirror your trade mark portfolio. Your house mark is clearly the most important term to secure in key territories, but you may decide also to obtain some domain name registrations for key product names.

When to register?
As early as possible! It is advisable to obtain relevant domain names before filing corresponding trade mark applications, as there are organisations that trawl trade mark registers and pre-emptively register relevant domain names where they are available. Similarly, domain names should be secured before the announcement of major product launches or mergers and acquisitions.

Where to register?
Again, mirroring your trade mark portfolio can be helpful. In addition to securing one or more sensible generic TLDs, it is advisable to obtain country code TLDs in key territories of commercial interest, including potential important future markets. Interestingly, there is no dispute resolution system for German and Austrian ccTLDs (.de and .at respectively), so those countries could be considered “high risk”. In the event of an abusive registration being made in those territories, you may need to bring expensive action in a local court to recover the domain name, so if you have any interest in Germany or Austria, it may be worth securing your own domain names there.

Who should control your domain name portfolio?
It is important to ensure that someone is actively managing your domain name portfolio so that no domain names are accidentally allowed to expire. Typically, that function can end up sitting in many different areas of a business, with the legal team, IT team or even finance team being given the role. However you choose to manage domain names, it is vital that there is communication within the business to ensure that your trade marks and domain names line up and that announcements aren’t made before domain names have been considered. The recent news story about Mattel inadvertently printing a pornographic website address wicked.com (rather than the correct wickedmovie.com) on the packaging for dolls released to tie in with the Wicked film highlights the importance of all parts of your business knowing precisely what domain names you do (and don’t) have registered.

In summary, all businesses need to think about domain names and should ideally put some kind of domain name strategy in place. Responsibility for that strategy and ongoing domain name management should be clear and should go hand in hand with your decision-making on trade marks. For many organisations, once a little thought has been put into securing key domain names and setting up an appropriate person or team to take responsibility for maintaining those, ongoing management should not take significant additional effort. However, the costs of ignoring the topic can be high.

Get in touch if you wish to discuss any of the issues raised above or any aspect of your trade mark use and protection. We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys.