Building a successful brand is an important part of ensuring the long-term financial health of your business. We now live in a digital age which means that taking advantage of e-commerce opportunities can help you thrive even if you run a more traditional brick-and-mortar company.
With that in mind, if you are new to the process, you may have some confusion about what the terms “trademark” and “domain name” mean. Because both can greatly benefit an organization, we will explore the differences and similarities between the two in this post.
Now, while a trademark and a domain name may overlap, they are not exactly the same thing. Simply put, a domain name is a web address, while a trademark refers to the company brand. Trademarks are how a consumer can identify your goods and services and distinguish you from your competitors. Moreover, these marks provide legal protections that prevent others from using the name.
Overview of Domain Issues and Registration
Now, when deciding on a name for your business, it is important to research whether that particular domain is available. This is because you want to make sure that your potential customers can easily navigate to your site.
That said, there are many free and easy to use domain search tools available online. In some cases, it makes sense for a business to select a domain that mirrors its trademark. An example would be eBay, which, as you may know, has the web address ebay.com.
However, there may be situations where it makes sense to choose a domain that differs from your mark. This might be because the web address is already taken or because the name is too long and an acronym would be easier to communicate to potential customers. For example, the band “Queens of the Stone Age” has its name trademarked, but not “qotsa”, which it uses for its domain (qosta.com).
It’s important to note that registering a domain does not necessarily mean that you have trademark protection. Instead, in order to receive this protection, you must use the name in connection with your goods and services. This means that you must be actually doing business in order to qualify.
Further, the name you choose to trademark must be distinctive and not generic. For example, registering the domain “coffeebeans.com” will likely not qualify you for trademark status. This is true even if you are selling coffee beans and products through e-commerce. By contrast, the domain “jamboreejava.com” is more distinctive and should qualify for trademark protection.
Domain Registration and Trademark Infringement
Now, just because you are able to register a domain name does not necessarily mean that you are free to use that name to conduct business. The test is whether a potential customer may be confused due to the mark being similar to an existing trademark.
If so, you may be forced to stop using the mark and could face penalties due to the infringement. Under the law, the company that uses the mark first has the legal protection, regardless of whether the trademark was ever registered with the government.
For example, if you were able to register the domain “ebay.net” and decided to put up an auction site, this would be a fairly clearcut case of trademark infringement. As a result, you could be sued and ordered to stop using your site and to pay money damages. For this reason, it is critical that you do a comprehensive trademark search before registering your domain.
What If Someone Else Registered the Domain First?
That said, even if you select a name for your business that is not currently being used in commerce, you may encounter trouble when attempting to register the domain. This is because certain domains are often purchased in anticipation of a person or business desiring the web address for their business.
Now, if the person that purchased the domain did so with the intent of making money by selling the trademark to a business owner, this is known as cybersquatting. Bear in mind that these practices are illegal under the Anticybersquatting Consumer Protection Act. This means that if you can prove that someone purchased a domain in bad faith, you have the option of bringing them to court.
If successful in your claim, the cybersquatter will be ordered to stop using the address and relinquish ownership to you. However, note that just because a domain is taken does not necessarily mean that it is evidence of cybersquatting. The person that owns it may have a legitimate purpose for registering the domain before you. In these cases, you may have to choose an alternative address.
For example, you might try any one of these alternatives:
- Using .net, .org, .biz, etc. instead of .com
- Using an abbreviation of the name
- Adding state initials to the name
Note that in some cases you may be able to purchase the name from the domain owner. If you are interested in researching who owns are particular web address, you can find out at www.whois.net.