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It’s all about domains… | Giovanni Seppia (EURid)
6 Min Have you already included your domain names as part of your registered trademarks? Find out how to protect your digital brand asset number one under trademark rights: Your domains!
Published by
Simone Catania
Date
2021/08/02
Domain names have become a real digital asset: they do not only represent the web address where your customers can find you. With the rise of the internet, domain names have become real brand names, often even including their extensions. And this is not only a marketing action. A registered trademark can include domain names as well, ensuring that no one besides the trademark owner has the right to use similar or misspelled names and avoid cybersquatting or other trademark infringements.
In the past years, EURid, the European registry for the .eu TLD and its variants in other scripts has been focusing a lot on creating a safer domain space, fighting against trademark and copyright infringements. To reach this goal, they have partnered up with the European Union Intellectual Property Office (EUIPO), the organization responsible for managing the EU trademark and the registered community design.
We invited Giovanni Seppia from EURid to discuss the relationship between domain names and trademarks. Thanks to his long-time experience in the domain industry and the expertise brought by his organizations, Giovanni will shed light on some key questions related to this topic.
There are many ways to check possible trademark infringements. A good starting point would be to consult the WHOIS database for already registered domain names and perform a TM search before registering the domain name.
1. Are domain names and trademarks related?
Domain names and trademarks have a completely different protection regime. A domain name does not constitute a separate specific intellectual property (IP). Still, a domain name can be a protected element under a registered trademark. There are some cases of domain names which have become a brand or even trademark on their own like Booking.com.
Only with an official registration as a trademark, the domain name can benefit from its status with an exclusive Intellectual Property (IP) right. Registering a domain name that is identical or similar to a trademark is not unlawful per se. Meaning you could potentially register a domain like apple.eu for an online apple or grocery shop, but it may be infringing on third parties’ intellectual property rights, and be considered abusive, like typosquatting.
What is intellectual property?
Intellectual property (IP) refers to creations of the mind – such as designs, symbols, inventions, literary and artistic works, (brand) names and images used in commerce.IP is protected in law by
- patents
- copyright
- trademarks
which enable people to earn recognition or financial benefit from what they invent or create.
2. Does registering a domain name qualify it as a trademark?
The mere registration of a domain name does not qualify it as a trademark, but a registered domain name can become a trademark. To qualify as a trademark, the registered domain name must meet certain requirements and be officially registered as a trademark, either without the extension (e.g. Apple) or with the extension (e.g. Booking.com). Furthermore, the trademark protection is, however, restricted to selected domain classes, and it is also limited in its territorial scope.
3. What about copyright? Does it protect domain names as well?
A domain name is, in principle, not subject to copyright protection. Copyright protection cannot be granted to a single word or domain name, but is used for artistic work, such as a book, a painting, or a piece of music. Thus, copyright only relates to the content of websites rather than domain names.
4. When does a trademark infringement occur with a domain name?
Let’s imagine an international registered trademark for shoes like naikeeshoes.com and a competitor registering the domain name naikee-shoes.nl. The competitor is using the registered trademark without permission as part of its domain name, attracting visitors without selling Naikee shoes. The consumers are misled because they might think that the website belongs to the holder of the registered trademark Naikee Shoes. In this case, the use of the registered trademark as part of a domain name is found illicit.
5. How can you dispute a domain name?
To dispute a registered trademark or a registered domain name, the first step would be to contact the infringing party by sending a “cease and desist” letter ordering them to stop the infringement. When disputing, e.g. a registered .eu domain name, you can use the alternative dispute resolution procedures (ARD) available via the Czech Arbitration Court (CAC) or WIPO Arbitration Center and eventually opt for court proceedings if necessary. The claimant can ask for the domain name to be revoked or have the domain name transferred to them.
An ADR dispute can be resolved in 3-4 months on average. At the end of 2020, 46 cases were filed with CAC, and 20 with WIPO. Disputing a registered trademark is typically done via court proceedings and it can easily take years before the dispute is concluded, unless settled.
6. How can you avoid trademark infringement when choosing a domain name?
There are many ways to check possible trademark infringements. A good starting point would be to consult the WHOIS database for already registered domain names and perform a TM search before registering the domain name.
When searching for a .eu domain name on the WHOIS runned by EURid, it also shows its availability as an European Union trademark (EUTM) via the lookup functionality within EUIPO’s EUTM database. The .eu domain name of your choosing may or may not show as “not available as an EUTM”. This means that it has already been applied for or registered as an EUTM.
7. EURid is collaborating with EUIPO to support SMEs’ trademarks. What is the main goal of this partnership and what have you achieved so far?
Because European TM applications are published online before the EUTM has even been granted, EUIPO noticed that some people take advantage of such publications to register the corresponding domain name in the .eu space beforehand.
The main goal of the collaboration with EUIPO is to make IP rights holders, mainly EUTM holders, aware of a potential infringement by offering tools on our WHOIS as the one mentioned above. Within this framework, EUIPO also offers a notification service. If someone registers a .eu domain name identical to an already applied or registered EUTM, EUIPO sends an alert to the EUTM applicant or EUTM holder and notifies them of the domain name registration.
Since 2020, EURid has been cooperating with EUIPO to offer webinars and guidelines ad-hoc for those SMEs willing to learn more about domain names and trademarks.
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