It’s one of the many IP-related problems of starting a business in the digital age.
You come up with a perfect brand name.
Do all the paperwork, register a trademark, and even tell everyone about it.
But when go you to register a domain name online, you notice something terrible.
Your perfect domain name has already been taken! Or someone else is already using a similar URL to your brand name!
So, in such a situation what should you do?
Do you go to court and claim the rights to the domain since you already have a trademark? Wait… does your trademark even give you the rights to the URL or domain name?
Well, join us by reading this article as we explore trademark rights and domain ownership. We hope this article will shed more light on what rights a trademark gives you against a domain name and what you can do when someone else starts uses your brand name as their URL.
Without much further ado, let’s jump right in!
So, does a trademark give you rights to a certain domain name?
No (unfortunately :-( ). Having a trademark does not necessarily mean you have rights to a URL or the right to own a certain domain.
A trademark is only used to protect words and design elements that identify the owner, source, or developer of a certain product or service. It prohibits others from using marks, symbols, or designs that look similar to yours and can cause confusion with your brand.
In certain cases, however, a domain name can qualify for trademark protection. For your domain name to qualify for trademark protection there are a few factors that need to be considered.
1. Who was the initial owner
Who owned the domain name first? If you were not the first to own a particular domain name, then you will have a hard time asserting that you should be the owner of that domain name.
Acquiring a trademark does not necessarily mean that you own the rights to a domain name that someone else already owns and has been using.
However, if you were the first person to own and use the domain name to market your products or services, then your domain may qualify for trademark protection. And this means you can prevent others from opening a website with a similar domain name if you already have a registered trademark.
2. How is the domain name being used?
Having similar business names and ‘look-alike ’website URLs is not uncommon and does not necessarily count as trademark infringement. A domain name qualifies for trademark protection when there’s a similar domain name that appears confusingly similar to customers.
For example, let’s say you have an eCommerce store that sells clothes under the domain name morningstar.com. If one of your competitors opens a website with a slight URL variation to your names such as morningstarr.com or morningstarclothes.com then your domain name qualifies for trademark protection and you can prevent them from using the URL.
However, if a company launches a website with a similar URL but they are not trying to compete with you and their URL or website does not confuse your customers then this does not necessarily result in trademark infringement and you cannot prevent them from using it.
So, what should you do if someone registers a similar domain name?
What should you do if someone else has a ‘look-alike’ domain name? 3 Options
Option 1# Keep calm and do nothing
One of the cheapest options is to do nothing and let go.
This can be particularly useful if the domain owners are not trying to compete with you or if their website does not look confusingly similar to yours.
And let’s face it, if a visitor visits the wrong website and discovers it then they will go back to Google and search for your website. Besides, you can always use search engine advertisement (SEA) to lead customers to your site.
However, if you notice a similar domain name and website looks confusing to your customers or is serving a similar market to yours, then you might want to look into the other options.
Option 2# Purchase the domain name infringing on your trademark
A simple solution to getting a similar domain name is to purchase it. Everything has a price and the current domain owner will most likely be willing to let go of a domain name if your offer is good enough. Depending on how much you are willing to pay, this could be the easiest way to get a domain name back.
If you are looking to buy a domain name for your business it is best to keep your identity anonymous. Most domain name sellers will attempt to inflate the price if they discover you are trying to get it for a notable brand.
Option 3# See you in court
If everything fails, you can escalate the situation to court and sue to get the domain owners. This might not be the most ideal process because it can be time-consuming and generally, you have to gather evidence to show your trademark is being infringed by the domain owner. For example, in most cases, you’ll need to prove that the domain name has been registered in bad faith or it is confusingly similar to your brand name.
This method, however, always works when someone is trying to rip you off and divert your customers to their website by infringing your trademark.
Your domain name is just as important as your brand name. Make sure to protect it using the methods we’ve outlined to avoid losing your business to someone else.
If you have a question on Intellectual property protection, feel free to reach out to us! We will be happy to strategize and talk about it. Good luck with your business!
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