Trademarks and Domain Names: Similarities, Differences, and Disputes

    Trademarks and Domain Names: Similarities, Differences, and Disputes

    Those who are entering the world of intellectual property need to be aware of trademarks and domain names. These are two forms of intellectual property which are commonly confused due to their similarities. However, closer analysis reveals that there are significant differences between the two.

    Some might not fully understand the nuances that distinguish trademarks from domain names. Others might assume that they are one and the same even though such is not the case. Regardless, anyone who seeks to make full use of intellectual property protection ought to understand the finer details related to trademarks and domain names to avoid making any serious errors in this area.

    How Trademarks and Domain Names Are Similar

    In general, trademarks and domain names are forms of intellectual property which have more similarities than differences. Both trademarks and domain names primarily serve as forms of distinguishment. Trademarks and domain names are used to protect the reputation, revenue, and identity of a business through intellectual property rights. Both can expire after a certain duration. Additionally, any specific trademark or domain name may only be registered if no one else in the relevant jurisdiction has done so.

    It can even be possible to register a domain name as a trademark. Many business owners choose to do so because trademarks tend to be more valuable than domain names. However, not every domain name can be trademarked and receive intellectual property protection. Such intellectual property protection may come through either common or statutory law.

    Domain names which can be trademarked must fulfill two criteria. The first is that they must either be distinctive or have a distinction resulting from consumers’ association of the domain name and the Internet business. The
    second is that the domain name’s owner must have been the first to use it to sell goods or services.

    A trademarked domain name provides its owner with legal rights over the name in the jurisdiction where the trademark was granted. It also denies anyone else the right to use a similar domain name if doing so would harm the reputation of the owner’s business. Most importantly, the intellectual property rights to which a trademarked domain name provides access strengthen the brand name and increase the brand’s visibility.

    How Trademarks and Domain Names Are Different

    The primary difference between trademarks and domain names lies in their identities. A trademark is a graphic representation which distinguishes certain goods or services from others. While a domain name is also a form of distinguishment, it instead provides a specific identity on the Internet.

    A further difference between the two can be seen in their respective registrations. Descriptive and non-distinctive terms usually cannot be registered as trademarks. However, they can be used as part of a domain name.

    Trademarks and domain names pertain to different aspects of intellectual property protection. Trademarks provide an owner with the exclusive right to use a particular sign or term. Domain names permit owners to use and protect that name online.

    One final difference between trademarks and domain names can be seen in their respective scopes. National intellectual property organizations govern the registration of trademarks. This is not the case with domain names. Domain names are international in scope. Therefore, they do not always have to be bound by restrictions which national intellectual property organizations might impose.

    Trademarks and Domain Name Disputes

    Those who do not truly understand the qualities of domain names and trademarks might inadvertently find themselves embroiled in a domain name or trademark dispute. This is because ownership of a registered trademark does not automatically provide the owner with the right to use it as a domain name. Registered domain names, like trademarks, are forms of intellectual property which must be unique.

    A common domain name dispute linked to trademarks arises when a similar business challenges a domain name owner’s right to the domain name. Cybersquatting is also a common domain name issue with a connection to trademarks. It occurs when someone registers another’s chosen domain name in bad faith to gain a commercial advantage.

    How to Resolve Trademark and Domain Name Disputes

    There are several options available to those who seek to resolve any ongoing dispute related to trademarks or domain names. Many who believe that their intellectual property rights have been violated in such a dispute may choose to send cease and desist letters. Others might use a certified intellectual property dispute resolution service.

    In the most severe and blatant cases of trademark or domain name infringement, court action can be sought. Before making this choice, one should take proper legal advice.

    If the issue concerns domain names, one should also study the World Intellectual Property Organization (WIPO)’s Uniform Dispute for Domain Names Resolution Policy. This policy assists with the resolution of disputes over generic top-level domain names.

    This article brought to you by Exy Intellectual Property Malaysia and Singapore.