One of the first things that many business owners will do when starting a new business is choose a domain name. Typically, an online search will be conducted via the registration agent’s website and if the desired domain is free, it is duly acquired. A Google search will probably also be carried out to see if anyone else is using the using the word(s) constituting the domain name. So far so good.
However domain names are also more often than not representations of the business’ brand name, or mark. As such the domain name takes on a huge significance and value to the business but in so doing moves from the cyberspace world of the domain names to the terrestrial arena of trademark law.
Some domain name users suppose that the availability of a domain name for purchase signifies that the domain name might be used without fear of challenge. On the contrary, trade mark law may expose the unwary registrant to infringement proceedings. Additionally, in choosing a domain name which is a representation of the business mark, regard should be had to the future security of the mark and the option of trademark registration. So for these reasons, before choosing a domain name you should first check that the name does not infringe somebody else’s trademark. It is possible to carry out online searches of the trade mark register free of charge. That will let you know whether any marks have been registered which are the same as or similar to the domain name you propose to use. However not all trademarks are registered, so further searches and enquiries should be carried out. The safest course is to avoid choosing domain names which incorporate or are similar to any other business’ trade mark or brand name. If the goods or services you offer differ from those of the trade mark holder, or if the trademark holder is located in another country, then infringement may not occur. However advice should be taken if you are intent on purchasing a domain name which incorporates or is similar to another’s mark in such circumstances.
Finally, just a reminder about delegating too much to your web designer – register the domain names yourself! It is a surprisingly common scenario for a business to have been running a website, built up goodwill over a period of years , garnered an impressive list of customers, have an impressive online presence with good SEO performance and have promoted the website URL extensively. Then – the website design company (who registered the domain – but in their name) fall out with the business owner, or perhaps see a commercial opportunity to sell the domain name. So they shut down the website and prevent access to the company’s domain name. The company cannot even access the domain control to point it to a new domain name – because there is no access or control.
Nothing in this awareness article is intended as legal advice. If you have a specific legal requirement or query you should consult a solicitor directly.