Domain names play an important role in the sales and marketing activity of any organisation, but the IP implications of registering and managing online channels can be easily overlooked, especially if responsibility sits outside the IP department with marketing and/or IT teams. We set out points to consider when seeking to align domain name registrations with trademark rights.
We wrote last month of the need to audit trademark portfolios for value and efficiency to ensure your organisation’s IP portfolio accurately reflects and supports your current and future business strategy. However, trademark rights are not limited to the branding used in the physical world; company and product names also need to be proactively protected on the web.
Indeed, given how large a role the internet plays in all our daily lives, focused domain name management is arguably just as important to success as online brand protection strategies. Applying similar IP management and protection strategies as those used for trademarks online can facilitate proactive management of corporate domain name portfolios.
Start with the ‘what’
As IP professionals already know, careful planning is crucial when it comes to the registration and ongoing protection of a company’s intangible assets. Yet, few businesses have established a clear and consistent strategy for registering and renewing domain names. In this sense, the first step for any organisation should be to assess what has already been registered in light of the company’s brand portfolio. For example by linking domain name registrations to brand and product lines to assess whether:
- the domain names accurately reflect the brand names and associated trademark registrations;
- there are any gaps in coverage (e.g. core brands, product lines or trademarks that do not have equivalent domain name registrations);
- domain name registrations are being maintained for products or trademarks that are no longer in use (bearing in mind there may be good reasons for doing so); and
- there is consistency in the registries used to register the company’s domain names (e.g. in terms of the choice between top-level (gTLD) or country-code (ccTLD) registrations).
Consider the ‘where’
Next, start to construct a hierarchy of registrations or potential registrations. Typically, your company name should be on top; followed by your core brand and product/service names; and then secondary or lesser known brands. Beneath this, you will need to consider:
- applicable extensions, i.e. gTLDs, ccTLDs and the range of ‘new’ gTLDs, such as geographical-based (e.g. .London) and sector-focused extensions (e.g. .shop);
- defensive registrations; for example, common misspellings of your company or brand names, or terms/brands/slogans with which you are commonly associated; and
- one-off registrations (e.g. associated with a new product launch or marketing campaign) will need to be recorded and maintained.
Think about the ‘how’
Domain name registrations may not be a major expense when assessed individually, but add them together and that picture can look very different. On the other hand, the time and cost of pursuing third parties for infringement action can be substantial, as can the loss in revenue and reputation from allowing such sites to continue trading unchallenged. Consider centralising your domain name portfolio as you would your other IP assets in order to obtain a clearer view of your portfolio. This can be done 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.
The purpose of the last step is to deliver a clear strategy for the organisation that sets goals and deliverables for the year ahead, and identifies priorities for action where vulnerabilities have been identified.
The importance of domain name watching
These days, every business needs to actively monitor for infringement activity online (including counterfeiting activity, cybersquatting and lookalike sites). Implementing a domain name watching process as part of, or alongside, your wider online brand protection will help you to monitor core rights, as well as to design a defence strategy for prioritising action. We recommend approaching this in two parts:
- Part 1 defines the domain names that are necessary to achieve a consistent and effective online presence, as well as the decisions that need to be made regarding the abandonment of obsolete registrations and the acquisition of new ones.
- Part 2 sets out the business’s future defence strategy and guidelines to inform future decision-making in light of common infringement situations. For instance, which domain names to monitor, and what action to take when infringement is identified; e.g. should you ‘ignore’, ‘monitor’, ‘buy back’, ‘send cease and desist’, ‘undertake UDRP action’ and so on.
Depending on the size of your portfolio, you may also wish to consider employing a (global or localised) domain name monitoring service. This can also be delivered by Novagraaf with legal opinion if you require additional guidance on pragmatic options for remedial actions.
For further information on Novagraaf’s domain name management services, including auditing and domain name management technology, please speak to your Novagraaf attorney or contact us below