Choosing a perfect domain for your business or blog sounds easy but when you start really working on it there are tons of obstacles you have to overcome. The most important thing is that the domain name has to suggest the nature of the commerce on the website, but you have to look in general, for a memorable, pronounceable/easily spelled, short, clever, and with no hyphens domain. However, one of the most underestimated problems, because we mostly know nothing about it, is the legal perspective. Normal people registering a domain do not understand the implications, possibilities and problems around trademark protection. We have, therefore asked Karen J Bernstein, New York City Internet lawyer, who has experience in domain disputes to give us an advice on what should we think about from the legal perspective when registering a domain.
What should we think about, when registering a domain, from legal perspective?
If you plan to invest a lot of money in your new business, the name of your domain name and business are probably one of the most important assets of the company, so the best way to know for sure whether to register a domain name from a legal perspective is to get a trademark professional to run a clearance check to make sure that you are not violating someone’s trademark rights.
How do you check if the domain you want to register isn’t already protected as a trademark?
If you think you have a great idea for a domain name and you are planning a real business behind it, before you register it, go to the WIPO Trademark Database to see if there are existing trademark registrations in other countries for the domain name you want to register. For good measure, it’s also a good idea to look at your country’s trademark office online searchable records to see if someone else has a trademark for what you want to also use for your domain name and website. Trademarks are country by country but if you ever get involved in a domain dispute you can argue that you searched the WIPO Trademark Database and your country’s online trademark database. You want to keep screenshots of your search results in case you ever have to prove what you did before registering a domain name. Also, it depends on how you plan to use the domain name. If the search reveals that someone else is using a similar name for a totally different product or service, you may not be violating anyone’s rights. On the other hand, if they are offering the same types of products or services as you plan to offer on your new website, then you should probably not register the domain name.
Can I register a trademark based on my domain and how safe is this?
One common misunderstanding is that registering a domain name gives you automatic trademark rights. That is incorrect. Regarding safety in registering a trademark based on a domain name, so long as you are using the domain name at a real website or intend to use the domain name at a website, there is nothing unsafe about it.
If I already own a trademark and discover one day that a domain name with my trademark is registered how can I get the domain back?
It depends on whether you obtained the trademark before the domain name was registered. If your trademark was registered in a national trademark office, then you may have superior trademark rights and should consult an attorney about whether it makes sense to send a cease and desist letter or take further legal action. If, on the other hand, you did not acquire trademark rights before the domain name was registered, then you probably have no legal recourse, so you may want to try to buy the domain name. It all depends on the facts though.
Do you count in the domain just what is infront of the dot (left of the dot) or you count everything for trademark purposes?
The general rule is that the law looks only to the left of the dot. In other words, Top Level Domains (TLD) like .com and .me are not considered as part of a domain name that may be violating someone’s trademark rights. But some cases have analyzed the entire domain name, including the TLD. For example, there was a case involving the domain name, Project.me, which read to the left and to the right of the dot contained the entire trademark, so it depends. Registering a domain name that spells out a word or contains an entire trademark to the left and right of the dot is called a domain “hack.”
Do you have any additional advice in terms of legal protection of our domains?