Nowadays, entities of all sizes need to have a web presence in order to stay competitive. Unsurprisingly, this year has seen a boom in trademark filings related to e-commerce. When it comes to finding a name for a business, website, product or service, a consistent naming approach is key to managing the risk of counterfeiting and providing effective protection.
Common practice is to rush to buy the domain name you want, do a quick check of its availability, and then file for a trademark. However, other strategies may be more effective in coordinating these steps.
A domain name simply allows an entity to use their company name as the website name instead of the numerical IP address. While a domain name may be generic and easy to purchase through a domain name registrar, a trademark confers exclusive rights and must meet registration requirements, including being able to distinguish goods and services of the owner from those of competitors.
The fancier the name, the better the chances of registering the trademark and successfully enforcing it later. Therefore, a made-up or arbitrary name is often a better choice. This should be as short, simple and memorable as possible.
Before taking protective measures, an assessment of the risk of infringement of existing intellectual property rights must be carried out. This is an absolute prerequisite for any commercial use of the chosen name. Availability searches must reveal any conflicting prior trademarks, domain names, company names or geographical indications. While it can be disappointing that potential roadblocks are disclosed, they often are, and disclosing them early allows time to work out pre-launch solutions, such as negotiating coexistence agreements with their owners. In case of significant risk, it is wise to have a shortlist of alternative names on hand.
Once the name is cleared, the next step is to quickly purchase the domain name for use. It is important to check that it is available at a fair price and whether it has already been registered. Additionally, the name chosen must be kept secret (with appropriate confidentiality agreements) and any offers to purchase must be made anonymously.
Once the domain name has been registered, the trademark application must be filed immediately and in the applicant’s country of residence, in order to obtain a basic trademark in anticipation of the filing of an international trademark. Then there is a priority window of six months to define the overall protection strategy (ie, where and by what route the protection should be extended abroad). This is the perfect time to build a strong defensive domain name portfolio, which will prove essential in preventing cybersquatters from taking advantage of the protected brand. While this protection should be as broad as possible, it should also be balanced by budgetary considerations. An infinite amount of extensions and names can be considered. Above all, the number of possible extensions continues to grow due to the frequent launches of new gTLDs, the most recent of which is “.contact”. It is therefore important to establish a list of priority extensions. If international activities are planned, the extension ‘.com’ is essential, while ‘.net’, ‘.org’ and ‘.info’ are also interesting. As with ccTLDs, it is recommended to register with the extension of the country of origin, as well as those of countries with future commercial developments. Other factors to consider are the popularity of the TLD, the commercial importance of the brand; target geographic areas; the potential for cybersquatting; and any interest in using the domain name in the future.
With regard to the name itself, it is advisable to register not only the exact version, but also local translations in the relevant foreign markets and spelling variants.
Keeping an IP portfolio alive mainly involves monitoring renewal deadlines. Trademarks are generally renewed every 10 years, while domain names must be renewed annually. A good tip is to register and renew them several years in advance and schedule automatic renewals.
A detailed annual audit is recommended to review market presence and risk of infringement or cybersquatting. It’s especially important to keep an eye out for relevant new extensions to buy. The annual registration of the mark in the TMCH allows for earlier access to register it with the new gTLD during the Sunrise period of 30 days before the launch of said gTLD. With respect to trademarks, the review should take into account that an unused trademark will become vulnerable to cancellation. For this reason, defensive marks are not a good option. Either way, a tailored, well thought-out portfolio is far better than a large, difficult and expensive portfolio to manage.
All of these steps should be carefully considered, aligned, and done early, keeping in mind that domain names and trademarks are granted on a first-come, first-served basis. At the same time, adequate monitoring must be put in place to detect and react quickly against any identical or similar use that would harm the business and/or the reputation of the mark. This should cover both trademark and domain name registries as well as the marketplace, including fraudulent websites. A good tip is to preemptively prevent third parties from registering certain domain names. This is much cheaper than initiating costly arbitration proceedings or legal actions to recover domain names and it allows the scope of defensive registrations to be narrowed. Blocking solutions include DPML, UniEPS, TRex and AdultBlock.
These efforts and investments will pay off because brands are important business assets and therefore part of a company’s value. Ensuring that these assets are properly protected will result in a high return on investment. The protection strategy is to anticipate, act proactively, find the right balance, maintain it and adapt to changes as they arise.