As many industries’ marketplaces move online, more and more businesses are realizing that domain names utilizing their company’s name and information are already taken. While this occurs with mixed intentions, it can come at a great cost for a business looking to house their website under the domain name that best fits their established name that is unavailable.
Virtually, a domain name acts in the same way as a storefront, so it is incredibly important for a business to have their first-choice domain. However, if the company owns the trademark that is incorporated into a domain name owned by another party, the trademark owner has the rights within their trademark to take the domain back. To do so, the rightful owner must file a domain dispute, which is essentially a formal complaint that is intended to cancel, suspend, or transfer the domain to its rightful owner.
When the Internet Corporation for Assigned Names and Numbers, also known as ICANN, was founded, the original intention behind its organization was to provide a resolution for “the trademark dilemma,” or the use of trademarks as domain names without the owner’s consent. Since the 1990s, ICANN has worked alongside the United Nations’ World Intellectual Property Organization to provide a platform in which domain disputes can be handled fairly. Today, the vast majority of domain disputes are filed through WIPO’s Uniform Domain Resolution Policy.
How are domain disputes handled?
Domain disputes are most commonly filed through UDRP, which stands for the Uniform Domain Resolution Policy. This method is popular because it tends to be a faster, more cost-efficient alternative to litigation, and is especially useful for trademark owners. If the owner of a registered trademark can prove that the domain in question is close to or confusingly similar to their trademark, the domain owner has no vested interest in the domain, and the domain is registered in bad faith, the dispute will be settled in favor of the trademark owner and the domain can be transferred to them. This process typically lasts about two months, which is a much shorter timeline than alternative litigation options. For more information on how domain disputes are filed, check out our post here.
Do I need a trademark registration for my domain?
The need for a trademark registration becomes prominent when discussing enforcement matters and domain disputes. It is much easier to resolve a dispute in your favor when you own a trademark registration for the domain in part or in whole. As the exchange of goods and services becomes more prominent virtually, companies are investing additional time and effort to build their websites’ appearance and functionality, and trademarks should be considered a crucial aspect of these investments. Often, a business’s name or another integral part of their branding is utilized in their domain name, assisting in the connection that customers make between the company and the goods and services that they offer.
Cybersquatting, which occurs when a domain name is retained by an outside party in an effort to make a profit, can be most effectively dealt with by a company that owns trademarks for these key components for their branding. Without a registration, it is a much more difficult and expensive endeavor to get back the domain name that should belong to their business. While a trademark registration of your domain or the branding included in your domain is not mandatory, it can be a very advantageous investment to make.
Overall, website domains are a valuable business asset for customer recognition and branding, especially if your goods and services are offered on your site. Ensuring that you have the ability to prevent a third party from profiting off of your brand’s reputation is crucial—and much more easily managed with a trademark registration in hand. If you are in need of assistance while navigating a domain dispute matter, or are interested in learning more about filing for a trademark, please contact one of the attorneys at Gerben Intellectual Property for a free consultation regarding what next steps are right for you and your business.