Robert Biles, Partner, Ince (Cardiff)
Matthew Hiscox, Director of Trade Marks, Ince (Cardiff)
Since the 1980s, domain names have acted as a widely available, commercial tool used by both businesses and individuals to sell their products and services online.
The use of domain names have grown exponentially over the last 35 years. In 1985, the first .com domain name was registered and in 1992, surprisingly fewer than 15,000 .com domain names were registered. Fast forward to today, and over 135 million .com domain names are available. Domain name registrations have become big business – for both the honest and dishonest.
Despite the history of the domain name system and registration, today there are three key areas of domain name registration we frequently assist our clients with: (1) the registration, maintenance and monitoring of domain names (2) domain name enforcement and (3) anti-counterfeiting.
Registration, maintenance and monitoring of domain names
A business or individual may register one or many domain names. Holders of domain names tend to be referred to as ‘registrants’ and domain name ‘holders’ – rather than ‘owners’; This is due to the common misconception that domain names are a business asset, where in fact, you do not own a domain, but instead procure a licence to use the domain for a set time.
Domain name registrars are charged a fee for a fixed period of time of normally one to two years, but sometimes ten years or more.
It is very important to formulate a strategy to assess which domain names a business may want to purchase. When formulating a strategy, it is important to consider what mark or variants of a mark may be used, assess the number of phonetical similarities to other words/numbers, and to also consider the required geographical scope. Unfortunately, if this is not done before a business realises, many domain names may have already been registered by third parties.
In addition, keeping up to date with domain name developments and ensuring domain names are renewed has become an important part of business administration. These administrative tasks have become particularly important due to the close connection between domain names and trade marks. Ensuring the domain name is renewed in a timely fashion and is not infringed by a competitor or unscrupulous party has become an important part of brand protection.
Further to the general management of domain names, there are a couple of small procedural changes to consider.
One of these changes is that the automatic right to an .uk domain name expired on 25 June 2019. Now, anyone can register a domain name that may already be held by a company with a .co.uk domain name. This may cause confusion in the market, with the domain .co.uk and .uk being managed by different businesses – but for the same business area.
In addition, .EU domains may no longer be applied for by UK individuals and/or businesses. Following Brexit, registrars have stated that domains must have an EU domicile address and if you do not have one, you will no longer be able to maintain and register .eu trade marks. It is recommended that you review your portfolios for .eu domains and take any necessary action – which a lawyer can assist with.
Domain name enforcement
Policing and enforcement of domain names has become a hot topic over the past 10 to 15 years. Whilst most domain name purchases are made with honest intentions, a small number are made with dishonest intentions.
If a brand has been lodged in bad faith by infringing a trade mark, including the misuse and/or misrepresentation of an existing domain name, it is important to assess the strength of the case.
From time to time, we still see cases where a third party (aka cyber squatters) has acquired a domain or domains with a view to leverage a sale of the domains for financial gain.
Domain name enforcement can be rather complex and often intertwined closely with trade mark law, so it is always recommend that you source an IP specialist, who can advise on the strength of your case and any next steps you should take.
Anti-counterfeiting and domain names
Anti-counterfeiting is a serious issue and is certainly on the increase. Specifically, there is a significant increase in online trade and is increasing further in the current climate; for example, the European Union Intellectual Property Office published a report back in 2017 highlighting the suspected infringement of e-shops on previously used domain names.
This is one of the ways that dishonest appropriation of trade marks can be carried out.
Online retailers can use domain names to lure in customers and suppliers by passing off products that claim to be produced by the authorised trade mark holder. The products are usually sub-standard, and in some cases very dangerous.
The best way to avoid this is through the constant renewal of domain names (building up a family of domain names, even if not used) and also putting in place a domain name watching service to highlight third-party domain names of concern.
What was once a seemingly unimportant overhead, is now becoming a crucial method of protecting a business's Intellectual Property (IP), it is recommended that this is given further thought.
At Ince, we can manage your domain name/s as your trusted legal and business support adviser, and used to add more value to the relationship with our firm.
The information above is not and should not be taken to be legal advice, and you should not take action or omit to take action based on this information.
If you require any help on the issues raised above please contact:
T: +029 2067 5113
E: [email protected]
Director of Trade Marks
T: 029 2167 2684
E: [email protected]