Conflict can arise when trade mark owners discover that the domain names they desire have already been registered by others for reasons legitimate or otherwise.
Put simply, a domain name is an address which enables Internet users to access a particular website. It is the virtual equivalent of a physical address and can be a valuable tool for promotional and marketing purposes. Registering a domain name means that nobody else can inhabit the virtual space which that domain name denotes. It also enables its owner to use an e-mail address containing the domain name. However, owning a domain name does not necessarily give a person the right to use it and a domain name registration should not be considered a substitute for a trade mark registration. In certain circumstances, use of a domain name can infringe another’s trade mark registration and, therefore, before registering a domain name it is advisable to carry out trade mark searches.
Generic Top-Level Domains (GTLDs)
Until 2013, there were 22 of these internationally agreed domain names, popular ones being com, .org., .net, .info and .biz. Since then, however, ICANN, the organisation responsible for the global domain name system, has allowed the establishment of numerous new GTLDs. Examples are .club, .photo and .boutique
Country Code Top-Level Domains (CCTLDs)
Most countries have a CCTLD. The CCTLD for the United Kingdom, for example, ends in .uk. Within those top-level domains, there are sometimes subdomains, for example .co.uk, .ac.uk, .ltd.uk.
In relation to clients’ existing domain names, we can provide an ongoing management service to ensure easy maintenance and good practice. We will consolidate all domain names into a single portfolio and, if necessary, arrange for the registration records to be tidied up. We can also advise on gaps in existing domain name coverage and provide guidance regarding possible new domain name registrations.
Domain names are generally granted on a first-come first-served basis. Provided no-one else has already registered a domain name, it will usually be available for purchase. In the case of certain domain names, particular eligibility requirements must be met. There is no limit to the number of domain names that may be registered by any one party. Often, a party will wish to secure a .com domain name and the corresponding CCTLDs for the countries in which it has commercial interests.
We can check the availability of domain names around the world and arrange for their registration, advising on eligibility requirements where appropriate.
We can handle the renewal of domain name registrations, monitoring renewal dates and dealing with the payment of renewal fees.
We can provide a range of searches to ascertain, for example, the availability of domain names and the existence of confusingly similar domain names held by others. We can also set up watch services to identify new domain names registered by third parties.
In response to concerns over the increased risk of cybersquatting following the introduction of new GTLDs, ICANN has created a ‘Trademark Clearinghouse’ (TMCH) allowing the relatively inexpensive recordal of proprietary trade mark rights within a central repository. Recording a trade mark with the TMCH has three benefits: a) as and when each new GTLD is launched, the trade mark owner is eligible to apply for registration of a domain name corresponding to its mark before the application procedure is opened up to the general public; b) the trade mark owner will be notified if a third party registers a new GTLD name corresponding exactly with the recorded trade mark; and c) a third party applying to register a new GTLD name corresponding exactly with the trade mark will receive notification of the recorded trade mark. We can assist in the recordal of trade marks with the TMCH.
Sometimes, a desired domain name will already have been legitimately registered by a third party. In those circumstances, it can be useful for a discreet approach to be made to the domain name owner to find out if the domain name might be available for purchase. We can arrange this. If successful, we can also arrange for the domain name to be transferred.
We can advise on domain name registrations that conflict with trade marks and the possible courses of action. In certain circumstances, use of a domain name will constitute trade mark infringement. In other cases, a domain name might constitute an ‘abusive registration’ against which action can be taken using a specialist dispute resolution procedure. A typical example of an ‘abusive registration’ is a domain name incorporating a well-known trade mark which has been registered by an unrelated third party for the sole purpose of selling it to the trade mark owner for a large sum of money. This practice is commonly known as ‘cybersquatting’.
The precise domain name dispute resolution procedure will depend on the relevant Internet registration authority and the countries concerned. We can handle formal dispute resolution in relation to GTLDs (via the World Intellectual Property Organisation) and .uk domain names (via Nominet).
