Domain names play an important role in the sales and marketing activity of any organisation, but it’s all too easy to overlook the IP implications of registering and managing online channels. Where then should you begin when developing a domain name management strategy? We set out points to consider when seeking to align domain name registrations with trademark rights.
To begin, consider what you should register – and start to construct a hierarchy of registrations or potential registrations. Typically, your company name should be on top; followed by your core (and preferably trademark-protected) brand and product/service names; and then your secondary or lesser known brands. As part of this, you should also consider defensive registrations; for example, common misspellings of your company or brand names, or terms/brands/slogans with which you are commonly associated. Finally, one-off registrations (e.g. associated with a new product launch or marketing campaign) will need to be recorded and maintained.
Or rather, in the case of domain names, with which registries? These days, it’s quite hard to find available domain names with the popular and wide-reaching .com, which is why the top-level domain was extended in the first place to include a myriad of other possible extensions. This gives you as a brand owner a lot more choice, but it also makes it harder to identify which extensions will resonate best with your customer base – and can leave you open to infringement activity. For example, should you choose a geographical-based domain (e.g. .London or .co.uk), or will this limit your market? Should you opt for one of the newer sector-focused extensions (e.g. .shop or .green), or stick to a more 'traditional' TLD? And, what about those extensions that you choose not to register – how can you be sure that a third party won’t seek to make a profit from that decision or oversight? Ongoing monitoring will be key to ensuring that you stay on top of any malicious activity as new domains begin to hit the market.
Trademark holders benefit from early registration rights on the launch of a new domain name extension. In the so-called Sunrise period (which lasts at least 30 days), only trademark owners can register domain names that match their brands before the extension in question becomes available to the general public. The only restriction is that the trademark(s) must be registered at the Trademark Clearinghouse, something Novagraaf can arrange for you. For pre-existing extensions, it will be important to check for availability as early as possible in the product launch cycle; particularly, if you wish to keep the domains registered as consistent as possible.
Domain names are not expensive rights to obtain or maintain; however, the time and cost of pursuing third parties for infringement action can quickly add up, as can the loss in revenue and reputation from allowing such sites to continue trading unchallenged. Consider approaching your domain name portfolio as you would your other IP assets; in particular, by: holding the records in one central location with clear management responsibilities; putting in place clear processes for registration, monitoring and enforcement; and, undertaking regular reviews to ensure that the portfolio as registered and maintained is aligned with your trademark portfolio and wider business activity.
Websites have historically been the territory of the marketing team, and there is a lot of sense in keeping things that way. However, any team responsible for domain name registrations needs to have at least a basic understanding of trademark rights as they crossover with domain name law and practice. Consider running training sessions with your marketing team to set out your rules as to trademark use, and to provide them with clear channels of communication should they come up against third-party registrations or other online activity that contravenes those rules.
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For additional insight and advice, read our article 'Is it time to rationalise your domain name portfolio?' or speak to us about a domain name audit.