Brand protection best practices: when domain names and trademarks go hand in hand – A strategic overview.

Defining and implementing a clear strategy is key to build a powerful brand, as the choice of a name carries far-reaching implications, largely exceeding mere marketing issues. Risk management from a business and legal perspective should be at the core of that strategy.

When talking about brand protection, domain names and trademarks are closely interrelated. They are two sides of the coin that should be addressed together to capture the whole picture and effectively secure your rights.

Although being complementary, domain names and trademarks are two distinct concepts framed by different set of rules. As obvious as it might sound, having a trademark does not automatically confer rights to a domain name, and conversely. More importantly, while covering the same particular name, different rights accrue from domain names and trademarks ownership. Understanding the rationale behind it is the starting point to build an efficient protection strategy.

Let’s break up the different elements to be kept in mind while implementing a brand protection strategy.

Domain names as an identification string

The main purpose of a domain name is to identify a particular web page on the Internet, as the address through which users can locate and access the website. A closer look at the meaning of the acronym URL (standing for « Universal Resource Locator ») should help to understand that a domain name is merely an informational component of an Internet address.

A domain name being an important business asset, making the right and informed choice is an essential and strategic decision. All the more since available naming options and extensions are on a continuing rise with the rollout of new generic top-level domains (gTLDs), allowing registration by competitors of different variations of the same domain.

Preventing the coexistence of confusing domain names while securing future market extension by building an extended portfolio is the crux of the issue. However, instead of shooting in all directions, setting up a continuous monitoring is often the best course of action in order to target the most relevant and useful domains.

That being said, we cannot stress enough the importance to fight the urge to jump head-first on the coveted available domain name.

The purchase of a domain name must follow a diligent process to cover all the angles. Overlooking trademarks related issues is a fast-track to disaster!

Trademark as a tool to secure exclusive rights over a name

The fact is that purchasing a domain name provides you with, well, the right to use that domain name for a certain fixed period of time, nothing more. The mere fact to own a domain name does not give you exclusive rights over this particular name (a common misconception), nor does it entitles you to the registration of a trademark.

On a strategic level, you must ensure a coherent approach where your customers should be able to easily locate you on the Internet upon entering your trademark in a search engine.

On the legal side, since domain names and trademarks registers are not connected vessels you could very well be infringing on trademark rights without even knowing it (with adverse consequences such as order for transfer/cancellation of the domain name or payment of damages). Purchase of a domain name is on a « first-arrived/first-served basis » and nobody will warn you about potentially confusing trademarks.

Therefore, before purchasing a domain name it is highly recommended to do your homework and proceed with a proper trademark availability search to identify any competitor using confusingly similar names. Given the territorial scope of trademark rights, that search should be extended to every country where you plan to operate.

It is also important to understand that it possible to acquire entitlement to trademark registration by filing a “Proposed use” (in Canada) or “Intent-to-use” (in the US) application before even actually starting to use the trademark in question (a way to acquire rights for a future use).

The recommended course of action is thus to proceed with an availability search and apply for the registration of a trademark before purchasing your domain name.

Trademark distinctiveness and indication of source

While domain names work as mere identifiers, trademarks function as source indicators, as they point to the person/entity providing the goods and services. The essential function of a trademark is to distinguish the goods and services of a business from the goods and services of other businesses in the marketplace. In other words, customers will make a connection between trademarks and characteristics such as reputation, quality and reliability they associate to the related products and services of its owner.

There must be a commercial tie-in to trademarks rights, while domain names can very well be purchased without actually operating a website.

Registering your domain name as a trademark

If you went through the comments above, you will understand that if your brand is also your domain name, it needs to be registered as a trademark.

However, in order to qualify as a trademark, your domain name must function as such, meaning that it must be distinctive and serve as an indicator of source (not as a mere informational indication). Your domain name could function and qualify as a trademark if it is clearly and prominently displayed on your website (not just in you URL) in such a way that potential purchasers will perceive it as a symbol of origin in direct connection with the goods and services advertised.

Once again, given the territorial scope of trademark rights, trademark applications should be filed in any country in which you operate or plan to operate, in order to preclude potential disputes and challenges.

The trap of generic and common domain names

Maximizing the chances for your domain name to stand out from the competition by making it memorable and easily recognizable will definitely help in the buildup of your reputation, in an overcrowded world wide web.

However, what could be a powerful and unmistakable domain name (as it alludes directly to the goods or services offered) could also be considered not distinctive enough to function as a trademark (and be afforded legal protection).

Therefore, it is very important to avoid using common, generic or descriptive terms in a domain name if you want to be able to benefit from trademark rights and control unwanted use by the competition.

The rationale behind this principle is that one cannot appropriate a generic or descriptive term and put other people at a disadvantage with respect to language that is common to all by preventing competitors to use such terms in the course of their business.

That being said, in case of non-availability of a domain name due to a coexistence of trademarks, the addition of a generic term might be a good alternative to get around the problem and secure a domain name incorporating you trademark.

Since prevention is always the best cure, the assistance of experienced counsel is highly recommended in the implementation of a brand protection strategy to avoid the pitfalls that could ruin your hard-fought efforts to build a powerful brand.

Ismaël Coulibaly is a lawyer and trademark agent registered with the Canadian Intellectual Property Office. He is a member of the trademark department at Benoît & Côté, a Montreal based intellectual property firm.

He holds a Master’s Degree (LL.M.) in business law (Université de Montréal) and completed the « Trademarks management and contentious proceedings » program (McGill University/Intellectual Property Institute of Canada).