There are over 350 million registered domain names in the world, and the number is increasing rapidly. Often when companies plan new products or services, they find out that the domain name that corresponds to the intended name of the product or service is already taken. Does this mean that the trademark is not available?
What are domain names?
Domain names are internet addresses. Their purpose is to identify where a specific website exists. More specifically, the domain name links to a specific IP address where the website exists. IP addresses are numerical strings, such as 126.96.36.199. It would be impossible to remember these. Domain names that consist of words are much easier to remember and use.
Domain names are also unique, so it is not possible to have two identical domain names.
The most important thing to know is that a mere domain name registration does not create any intellectual property rights to its owner. If you register a domain name, you do not get any rights to that name. The only thing is that others cannot register an identical domain name.
This also means that just by registering or using your domain name you will not be able to prevent others from using or registering a similar domain name or trademark. To do this, you need to register a trademark. In some countries, you may be able to get limited trademark rights just by using the mark.
The overlap between domain names and trademarks
Domain names, especially in a commercial context, are often the same as the owner’s trademark. For example, Netflix offers its service on its website that is identified by its domain “netflix.com”.
When a company creates a new product or service, it typically wants that product or service to be found on the internet on the website that has the same domain name as the trademark. Seen this way, it is easy to see that domain names are also commercial symbols that identify goods and services on the internet.
However, as already said above, the domain name registration does not create any intellectual property rights to the corresponding name.
When naming new products or services, you should find out whether the corresponding domain names are available. Firstly, you would probably want to register those for your own use if they are available. Secondly, if they are taken, you should review whether those websites are connected to similar products or services you are offering.
While the domain name does not in itself create any intellectual property rights, it is possible at least in some countries that offering products or services on the website creates use-based trademark rights. This requires that the products or services are commercially offered on the website, and the name of those products or services correspond to the domain name.
You also need to review whether these products or services are similar to those you offer. Even if the website offers products or services of the same name, but the products or services are not similar to those you offer, there’s unlikely to be any trademark issues arising out of the use of that domain name.
Whether or not use-based trademark rights exist needs to be determined on a country by country basis. In many countries, the law does not even recognise use-based trademark rights. In others, it is relatively easy to get at least some degree of protection by merely using the mark. Most notably, in the US the mere use of the mark can create limited trademark rights. If you are planning to offer products or services in the US market, you need to be more mindful of possible trademark rights that arise from the mere use of a mark.
If you do not plan to offer your products or services in the US, the risk of prior use-based trademark rights is generally lower because in other countries it is difficult or even impossible to acquire use-based trademark rights.
Finally, it is possible that the owner of the domain name has registered the corresponding trademark. If that’s the case, you need to review the registration(s) to see whether it contains similar products or services you offer.
Can you claim an older domain name for yourself if you register a corresponding trademark?
The short answer is almost always “no”. While it is not strictly necessary that you have trademark rights that are older than the domain name, it will make the case extremely difficult. You would have to establish, for example, that the domain name was registered in bad faith. This is difficult if the domain was registered before you came up with a trademark.
In most cases, if the corresponding domain name is taken, the only alternative is to try to purchase it from the owner. You cannot get your hands into an existing domain name simply by registering the corresponding trademark and claiming ownership of the domain name.
Domain checks are an important part of naming new products or services. The fact that somebody has registered a corresponding domain name is not too worrying in itself, other than for the fact that it is no longer available for you to claim for yourself.
In some cases, it may be that the owner has acquired use-based trademark rights if products and services are offered on the website in question. That assessment must be made on a country by country basis.