How to Protect your Trademark as an Internet Domain Name?

Written by: Ali Hijazi
IP Portfolio Department Manager at Abu-Ghazaleh Intellectual Property

Trademarks have become an integral part of our daily digital life and business, as in this era all products and businesses became present on the Internet, however if we ask ourselves what reminds us of the title of a specific product or brand on the Internet? Then it is undoubtedly the Domain Name. It is considered the main and permanent website address of any trademark, and without the domain name, clients will not be able to know your web address and thus browse your products, your trademark's updates and interact with it.

Furthermore, the widespread of e-business and e-commerce has given rise to a technological breakthrough which in turn led to a significant expansion in the field of domain names and their extensions to keep pace with the different fields and types of businesses. With these businesses relying on their trademarks in terms of marketing and interacting with their clients, it has become imperative for these trademarks' owners to protect, safeguard it against infringement, electronic theft among other designations that fall within the scope of intellectual property crimes and cybercrimes.

In this article, I will not go through the technical matters related to the domain names and its working mechanism, however I will address the domain name importance for trademarks and how to protect them from infringement.

There are those who troll trademarks and register them as a domain name either to sell it, negotiate with the trademark owner, or use it to harm the reputation of the trademark and undermine it, and this all falls within the so-called Domain Names Cybersquatting. Another type of such acts involves the exploitation of the trademark name by reserving a similar domain name while altering that name and/or switching letters so that the site visitor does not notice this minor modification and rarely feel it when visiting the website, which is called Typosquatting.

As a trademark owner, what should you do to protect your trademark domain name?
Obtaining the legal registration of the trademark does not necessarily mean that you automatically obtain the domain name, as domain names are based on the principle "first come, first served", so always make sure before planning to launch and announce a trademark that the domain name is available and matching your trademark. If so, register it immediately.

Moreover, register the domain name with different extensions (TLD: Top Level Domain Name) to prevent others from acquiring the trademark within the scope of domains such as .com, .net, .store, .shop and many others, as it also give an impression of what service the trademark provides. Among the required extensions that are also recommended for protecting the trademarks' domain name is the country codes or what is known as country code top-level domain (ccTLD) where the trademark owner can protect the domain name using the extension of each country separately, thus giving the trademark and domain name a large-scale protection. Examples of which include .ae (UAE) .jo (Jordan) and .sa (Saudi Arabia).

As a further precaution, register the domain name in both the plural and singular forms such as Trademark.com / TrademarkS.com.
To avoid the domain renewal period expiration by mistake, activate the automatic renewal feature, as there are websites that are dedicated for listing those non-renewed (expired) domain names thus you may fall victim to cybersquatting.

Besides, the domain names registration fees are much lower compared to those paid for the legal procedures required for resolving the relevant disputes. Therefore, investing in domain registration for protecting trademarks is crucial to avoid falling victim to online piracy namely the theft of the domain matching your trademark.

Furthermore, another important thing to consider is that the e-mail of the entity responsible for registering domain names shall  belong to a specific authority, for example (the Registry Department or the Intellectual Property Department), while avoiding to the extent possible using personal e-mail accounts as means of communication with respect to the domain names' technical and administrative related matters.

It is also advisable to use domain name infringement monitoring services, as this service is based on listing the trademark to be monitored then sending warning notifications to the trademark owner about the existence of a matching/identical domain in order to enable him to take the appropriate action to stop such infringement.

What should be done in case your trademark's domain had been subjected to theft?
In case you found that a domain is identical or similar to yours while being illegally used, you need to contact an intellectual property lawyer/advisor experienced in resolving domain names disputes. you may initially send the other party a relevant message to stop the infringement or you may proceed with the relevant legal and administrative procedures. These procedure usually takes place via multiple arbitration centers, including those affiliated with the World Intellectual Property Organization (WIPO), and there is also the Arab Center for Dispute Resolution, which provides its services (what is known as UDRP Uniform Domain-Name Dispute-Resolution Policy), where the matter ends up either by transferring the domain name to the trademark legal owner or deleting the domain as desired by the trademark owner.

So, these were, in short, some of the aspects related to domain names and trademarks in the context of intellectual property. 

To be continued ... in the next post.

Ali Hijazi
IP Portfolio Department Manager
AGIP
AGIP Profile: Abu-Ghazaleh Intellectual Property | AGIP People
Email: ippm@agip.com