The UK boasts the third largest e-commerce market in the world. In such a competitive landscape, a strong and protected brand identity is essential for success. In this article, we’ll take a look at the connection between domain names and trademarks, and their importance for robust brand protection.
What’s the difference between a Domain Name and Trademark?
Your Domain Name is your website’s address on the internet — what people type into their web browser to find your space online (like www.123-reg.co.uk).
Domain Names are always unique, and there are thousands of great domain names available. They’re valid for as long as the registrant (buyer) and registrar (seller) agree.
A Trademark is a word, phrase, symbol, or design that distinguishes your goods or services from others. If you don’t register your brand as a trademark, you’ll have little or no protection against third parties using it.
Your Trade Name, then, is the name your company operates under for everyday business. Also known as “doing business as” (DBA), Trade Names don’t always have a set expiration date like trademarks. This differs from the legal Company Name any limited company will need to register with the government. You won’t necessarily need to do so if you’re a sole trader.
While it doesn’t happen too often, there are times when a domain name might closely resemble an existing trademark. It’s a good idea to do a bit of research before settling on a new domain — especially if you’re starting an online business.
Before we go any further: Remember it’s always best to seek guidance from qualified legal professionals or official government sources. We’re neither! For more information, be sure to check out the Companies House website.
Getting to grips with brand protection online
It’s important to know that buying a domain is not the same as registering a business; your domain just secures your own unique address on the internet.
Registering a trademark is an important way to stop competitors or cybercriminals from profiting off your brand’s reputation and protect your brand identity. It’s how many customers will recognise your brand.
To operate your business legally and fully protect your name and brand identity, you’ll need to register your business with the government and think about filing for trademarks.
So, while they’re not the same, ideally you’ll want your domain name and trade name to match or be very similar. This creates a strong brand identity and helps protect you from competitors or copycats, both online and off. You can help secure your brand’s future by getting your trademark and finding the perfect domain name that aligns with it.
There are cases where you could lose the legal rights to use a domain if a trademark owner successfully argues that your domain name is likely to lead to confusion among customers.
Reverse branding
It’s become a popular strategy for entrepreneurs and start ups to check for available domain names first, then establish a brand based on what happens to be out there at the time.
This domain-first approach might be described as a kind of Reverse Branding. From Reddit to Instagram, Slack to Flickr — there are countless examples of successful companies that have adopted a brand name based on available domains rather than the other way around. This approach might be something for you to consider, too.
See also: Brandable vs Descriptive Domain Names
Who regulates Domain Names?
The Domain Name System (DNS) serves as the internet’s phonebook, turning easy-to-read domain names into numerical IP addresses that computers use to communicate. Details about registered domains (like the owner’s contact details or the website’s registration date) are publicly accessible through a sort of public database known as the WHOIS protocol.
The Internet Corporation for Assigned Names and Numbers (ICANN), a non-profit organisation, plays a big role in the global DNS system, governing top-level domains (like .com and .org) and setting policies down when introducing new ones.
See also: DNS and Nameservers – How Websites Get Found Online
Who regulates Trademarks?
The laws that regulate trademarks and copyrights depend where in the world you are, but in the UK they’re regulated by the Intellectual Property Office (UKIPO). You can use the UKIPO’s own database tool to search for existing registered trademarks.
When it comes to registering an official Business Name in the UK, Companies House also has its own Company Name Availability Checker, available here.
Trademark basics are similar everywhere, but the details of how to register and protect them change from place to place. The United States Patent and Trademark Office (USPTO) handles trademark regulation in the US, whereas The European Union Intellectual Property Office (EUIPO) handles things for EU member states.
Can I trademark a domain name?
The short answer is yes — you can trademark a domain name, in theory. The long answer is that it can get a bit complicated.
Owning a domain name doesn’t automatically grant you trademark rights. You need to register the trademark separately. Registering your domain name as a trademark can however offer much stronger legal protection than just registering the domain.
Trademarks are recognised as intellectual property, making them much more valuable than just a domain registration. Registering your trademark can be the most effective way to prevent others from using it as a domain name without your permission. This does at least grant you rights to use it within your industry and geographic area — and the legal tools to stop others from using confusingly similar trademarks.
Trademarking might also help in legal disputes if your domain name resembles an existing trademark — whether that’s in the main part of the domain name (Second Level Domain) or the “dot coms” or “dot co dots” afterwards (the Top Level Domain).
I own the trademark. Don’t I have rights to the domain name?
A trademark owner doesn’t automatically have the right to use that mark as a domain name. Different entities could hold trademarks for the same term in different markets or have already legitimately registered the relevant domain name.
❝ Being the owner of a registered trade mark, does not automatically entitle you to use that mark as a domain name. The main reason being, that the same trademark can be registered for different goods or services and by different proprietors. Also, someone may have already, and quite legitimately, registered the domain name, perhaps with its use being connected with unregistered goods or services.❞
https://www.gov.uk/guidance/unacceptable-trade-marks/
As a general rule, if a domain name is registered before someone else trademarks the similar term, you may have a stronger claim to its continued use. However, trademark law is complex, there are always exceptions, and it’s always best to consult professional guidance.
Using similar-looking domains to established brands (like “1234 Reg dot-something”) might actually fall under the realm of trademark infringement or cybersquatting. More on that later.
Can my domain name infringe on someone else’s trademark?
Afraid so! Domain names can infringe on trademarks if they include or are too similar to protected marks. This means if someone registers a domain name that’s too close to a well-known brand’s name or logo, it could cause confusion for consumers and harm the brand’s reputation.
For example, if someone were to register a domain name like “Burberry-coats-dot-something” without permission from the fashion brand itself, this could lead to legal trouble, given that people might think the website is affiliated with or endorsed by another company when it’s not.
Similarly, issues could arise if a domain name is simply too broad. One example involved the popular travel website, booking.com. In 2020, the U.S. Patent and Trademark Office argued that the name was too generic to be trademarked. On this occasion, however, the US Supreme Court ruled in the Booking.com’s favour.
To sum up, the potential for infringement goes in both directions:
□ On Others’ Trademarks: If your domain name is too similar to an existing trademark, you could be infringing on their rights, leading to legal action.
□ By Others on Your Trademark: Someone else could potentially register your trademark as a domain name if you haven’t protected it yourself.
What’s Domain Parking?
Domain Parking is the internet equivalent of buying a piece of land and then choosing not to do anything in particular with it. In other words: registering a domain name and choosing not to associate it with any sort of active online services. The domain sits idle, potentially holding a place for future projects, but putting a halt to acquisition by others.
Domain owners often use parking services as a kind of speculative investment or a way to monetise their parked domains. These services generate simple web pages populated with advertisements relevant to the domain name. Visitors arriving at the parked domain will encounter this page, and any clicks on the ads might generate revenue for the domain owner.
There may be cases when an extremely expensive domain gets parked, with the owner waiting for the right offer. This may be the case when it comes to some obvious single-word “dot com” domains, for instance.
Single-word domains related to common actions or industry keywords (use your imagination) are often highly valuable. “Insurance.com” sold for $35.6 million in 2010, for example. Some registrars even hold auctions for the most valuable parked domains.
See also: What is Domain Parking?
What’s Cybersquatting?
While Domain Parking is generally a legit strategy for reserving domains for future use, ‘Cybersquatting’ is a situation in which domains have very obviously been registered in bad faith — sometimes to profit from or harm the rightful trademark owner.
We’ve all had that experience of arriving at easy-to-type domains quite by accident (like stumbling upon an awful sort of digital Time Square or Piccadilly Circus). The experience is often poor (if not downright infuriating) — a minefield of pop-ups, click-bait, and all the worst things about the internet.
If you own a valuable domain name but aren’t yet ready to develop it, domain parking might be a short-term solution, but other options, such as “under construction” pages or domain resale, might be more worthwhile for long-term brand-building and value.
What happens if I try to order a domain with a Trademark Claim?
When you search for a domain and add it to the basket, you will receive a page informing you of any trademark claim. There will be an explanation of the trademark claim, along with a statement explaining that registering the domain may lead to a Trademark dispute.
You can then either remove the domain from the basket or confirm that you have read the notice and continue with the order.
Once the transaction goes ahead, the owner of the trademark will be notified that the domain has been registered. From there, they can potentially file for a trademark infringement dispute, in case the domain in question is used abusively.
Can I register a TLD (domain ending) associated with my trademark?
The Trademark Clearinghouse (TMCH) is a service that helps protect trademarks during the launch of new Generic Top Level Domains (gTLDs). Having your trademark in the Trademark Clearinghouse means that you will be notified every time someone tries to register a domain name that you have a claim for.
New gTLDs are seldom released and it’s often only major organisations and corporations that try to register them. When new suffixes are introduced, trademark owners can submit their trademarks to the TMCH database. Once verified, these trademarks are then eligible for certain rights protection mechanisms offered by ICANN, such as the Sunrise Period and the Trademark Claims Service.
Companies will receive notifications when someone attempts to register potentially conflicting domains. Note that additional requirements may apply depending on the specific TLD registry.
As a brand owner, you can submit your trademarks to the database both prior to, and during, the launch of new gTLDs. This will give you access to every Sunrise period, which will allow you first option to register any new TLDs to help protect your brand. You’ll receive an SMD file, which acts like a password when you come to register your new TLD. Having your trademark in the Clearinghouse is the minimum condition to be able to register your corresponding domain name during the Sunrise period.
What’s a Premium Domain?
Premium Domains are domains that have been registered but are resold at a premium rate. They’re often very short and based on in-demand words or topics. Buying a Premium Domain is the best way to secure popular domain names that you would otherwise be unable to register. It’s almost impossible to find unregistered one-word generic or two- or three-character domains, for example. This makes such domain names rare, with some buyers willing to pay large sums to own them. You’ll generally be charged the usual extension price when you renew.
What’s a Registry Premium Domain?
Registry Premium Domain names are new domains that haven’t been registered yet and have been given a Premium status by the registry due to their potentially high value. Unlike Premium Domains, which have a one-time premium fee, Registry Premium Domains have a higher fee attached to them throughout their entire lifecycle, including their registration, renewal and transfer price.
The key difference lies in how long that higher fee lasts: Premium Domains have a one-time bump in price, while Registry Premium Domains stay expensive throughout their life, with higher renewal and transfer fees as well. This suggests the domain registry itself considers the domain to be particularly valuable due to its memorability, keyword relevance, or brand potential.
Wrap up
Domains, trademarks and trade names all play different roles when it comes to building a strong brand. Knowing the difference can really help when you’re trying to protect your brand properly.
Buying a domain name web address through a domain name registrar gives you a home online, while registering trademarks protects your brand’s identity and reputation. Matching your domain and trade name can help create a strong, unified brand image. Remember, the best domain names go fast, so start your search today!
