Domain names are an extremely important opportunity for companies to reserve rights to their name beyond the physical retail space. As the importance of physical retail is wanes in place of ecommerce, domain names are crucial to any business’ visibility, given their ability to direct anyone in the world to their website.
Owning a domain name that is the same as your business name or trading name is important in establishing a presence on the Internet. However, when attempting to register domain names, many companies find that their company names or trading names have already been taken. Statistics from the World Intellectual Property Organization indicate that the number of domain name disputes reached a record high in 2017. As such, it is important for companies to take early pre-emptive steps to protect their brand in cyberspace; this will certainly include the early registration of domain names.
Domain names may be purchased through a variety of commercial service providers, or Registrars, such as Network Solutions, GoDaddy, and MarkMonitor. The price for purchase varies depending on domain name in question and the Registrar. While there are strict rules governing the trade mark registration process, any individual may register any available domain name for a small fee.
The following are some tips for registering domain names:
- Register quickly: Given how important domain names are in indicating and legitimizing trade source, and given that the domain name registration process generally operates on a first-come, first-served basis, you should register your domain name quickly to avoid it being taken.
- Availability: It is important to perform a domain name Who.is search to ensure that your domain name hasn’t already been registered. A Who.is is a public database that provides access to most, if not all, details about a given domain name. It is also important to perform searches of trade mark databases to ensure that your domain name is not likely to infringe any registered trade mark. You should conduct a trade mark search in every country in which you operate or intend to operate. For example, if your business operates in Singapore and Vietnam, you will need to conduct a trade mark search in these jurisdictions.
It is advisable to avoid any domain name that will confuse the general public or induce the general public to associate the website with another brand. For example, the domain name <amazoon.com> is likely to cause confusion with Amazon. If your desired domain name is unavailable, initialisms or acronyms may be used. Hyphens may also be added to the domain name to make it unique for the purposes of registration.
- Cybersquatting: It is possible that another business may have, in bad faith, registered a domain name that is similar to your business’ name. In this case, the cybersquatter may intend to illicitly benefit or profit from holding a domain name which is an exact match or common misspelling of a corporate name, or may intend to sell or lease the domain name to someone else. There are two ways to combat cybersquatting: the first is to bring trade mark infringement and passing off proceedings against the cybersquatter. However, this approach usually takes a long time and could result in significant legal fees.
Alternatively, for clear-cut cybersquatting cases, you could file a Uniform Domain Name Dispute-Resolution Policy (UDRP) proceeding, which is a quicker and more cost-effective solution. The UDRP requires that all registrants of domain names submit to binding arbitration concerning the continued ownership of a domain name whenever a challenge to that ownership is brought by and through an authorized forum. In order for you to recover a domain name, the UDRP requires that you prove the following three elements: 1) that the domain name in question is identical or confusingly similar to the trade mark in which you have rights; 2) that the cybersquatter has no rights or legitimate interest in respect of the domain name; and 3) that the domain name has been registered and is being used in bad faith.
- Policies and procedures: Problems may occur when an employee obtains a domain name on behalf of the employer’s business, and then either refuses to transfer the domain name registration to the employer or simply leaves the organisation without transferring ownership of the domain name. To prevent this, companies should develop written policies and/or procedures that explain how domain names should be purchased. A good internal domain name registration policy should specify which teams/employees have the authority to purchase, renew, and acquire domain names. It should also expressly exclude other employees from this authority.
- Renewal: Registered domain names must be renewed on time. Retrieving your domain name after it has expired may end up being quite costly and may result in confusion when visitors to your website are greeted by a message informing them that your site has been taken down due to a failure to renew the domain name (see John Lewis wedding gift registry). It is therefore advisable to use a docketing system to remind you to renew domain names when they fall due. For core domain names, you should consider arranging for automatic renewal or purchasing domain names for multiyear terms so as to minimise the burden of monitoring deadlines.
- Trade Mark Protection: Because domain names are so critical to the effective promotion and protection of a company’s brand presence online, the protection of domain names can be as important to your company as protection of your trade marks. It is important to remember that registering your domain name does not give you proprietary rights to the name. A party that registers a domain name does not own the name; he or she merely holds a licence to use it for a specified period, subject to certain terms and conditions. However, the licence may be revoked by the domain name regulatory body in instances of, amongst others, trade mark infringement and passing off. To claim ownership rights to a domain name, you should register it as a trade mark.
The main benefit of officially registering your domain name as a trade mark is the option it provides for legal recourse if someone infringes your mark. Trade mark owners may enforce their rights against domain names that are sufficiently similar or identical to their existing trade marks where those names create a likelihood of confusion, just as they may make a claim against brick-and-mortar infringers.
A common form of infringement happens when someone else registers a domain name with a small typographical error distinguishing it from your domain. Another form of infringement occurs when someone uses your mark incorporated within a domain name of their own.
Apart from “.com” domain names, it is also a good idea to register the domain name extension relevant to your geographic region – for example, “.com.sg” or “.sg” for Singapore – or with other common extensions such as “.net” or “.org.” This will prevent competitors from registering the same domain name with a different extension and ensures that ownership of close variations of your domain name remain with your business.
Have any questions?
If you have any questions about domain name registration, you can request for a quote with Aaron Thng or other lawyers. With Quick Consult, from a transparent, flat fee from $49, a lawyer will call you on the phone within 1-2 days to give you legal advice.
This article is written by Aaron Thng from Amica Law LLC and co-authored by Jasmine Godfrey of Asia Law Network.
This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. If you require any advice or information, please speak to practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of Interstellar Group Pte. Ltd. accepts or assumes responsibility, or has any liability, to any person in respect of this article.