Knowledge

Domain Names

Do I need to trademark my Domain Name?

Max Steinhausen

With the popularity of online shopping, establishing an online presence is now an important part of business strategy and development. The first step will likely be establishing a domain name, which raise numerous issues in relation to trademarks. This article will explore the relationship between trademarks and domain names.

What is a domain name?

A domain name is a business’ unique address on the internet from which they can host their business online. In Australia, licensing of domain names is done by companies on behalf of the Australian Domain Name Authority on a first come, first served basis.

Should I trademark my domain name?  

It is important to note that trademarks and domain names are two separate components of your brand strategy. Registering a domain name does not of itself confer any proprietary rights in the use of that name. This means that licensing a domain name alone does not give you any rights to take action against third parties who use your domain name in promoting their own brand.  Similarly, as noted above, because domain name registration occurs on a first come, first served basis, you are not automatically entitled to a domain name even if you already have it registered as a trademark.

To secure your brand, it is a good idea to have both a registered domain name and a registered trademark for your website identifier e.g. registered domain name for www.abcgoods.com.au and trademark for “ABC Goods”.

It is best to secure each of these at the very early stages of business development to ensure you have a consistent brand identity. For example, when deciding on a business name, it is important to consider whether there are any existing trademarks that may conflict with your potential business name and whether a corresponding domain name is available. This can be done through undertaking a trademark search through IP Australia and a domain name search through the AusRegistry WHOIS Service for the .au domain and the WHOIS service for global domains.

After you have decided on a business name, it is a good idea to register a corresponding domain name as soon as possible, even before setting up a website for your brand. This will guarantee the domain address is available for you to use in the future.

Ensuring that your business name is both registrable as a trademark and an available domain name before you commence trading will not only help you develop a strong brand identity, it can also save you significant time and money down the track if you later discover your domain name is taken.

What do I do if someone is using my trademark in their domain name?

An alternative situation may arise in which a third party has used your registered trademark in their domain name.

Disputes relating to bad faith registration of a domain name, where one party has illegally benefited from your trademark, business name or company name, are handled by the .au Dispute Resolution Policy. This is an affordable and time efficient alternative to litigation and, if a claim is successful, can require the domain name holder to cancel or transfer the domain name.

However, note that this dispute resolution policy only applies to the .au country code and does not extend to other countries or more generic domains (e.g. “.com”, “.org”) regulated by other bodies.

If someone has used your trademark in their own domain name, this could also give rise to a claim in trademark infringement against them where:

- the domain name is registered in good faith;

- the words in the domain name are identical or substantially identical with or deceptively similar to your registered trademark; and

- the domain name hosts a website trading in the same or similar class of goods and services in which your trademark is registered such that consumers would assume a connection between the two.

Conclusion

Establishing an online presence is now a significant consideration for new businesses. This can give rise to numerous strategic considerations in relation to securing your trademarks and domain name. An experienced IP professional can help you to navigate these and assist you with securing a strong brand identity.

If you would like assistance with managing your domain name and trademark portfolios, please do not hesitate to contact us.

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Imran Mehic
CEO, Sultan Cola

I've been working with Max and the team for a number of years now. They have helped me with multiple trade marks, objections/challenges and advice around the technicalities of the law. I would highly recommend talking to them if you're looking for great customer service, advice and results!

Mathew Stillone
Founder/Managing Director, Integrity Food Co.

Thank you to Max and the whole team! Your work is always of a high standard, professional and timely. I highly recommend Max and the team to any organisation needing IP support!

Anthea Thomas
Director, Hypnobirthing Australia

Excellent service, great result. We initially had issues with our trademark and called them to lodge a declaration to support the mark. Our mark was finally accepted and we believe this was only due to the thorough and detailed documents that were submitted to the trademark office. Great work!

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Founder/ Director, Mask Co.
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