Domain names and trademarks: How can businesses avoid disputes?

On Behalf of | Feb 17, 2021 | intellectual property & trade secrets

While the brick-and-mortar shop remains strong, there is no doubt that online commerce has become a fierce competitor in the business world.

For example, sales in e-commerce rose by 16% between 2016 and 2017 alone. The more consumers take to their computers to shop, the more businesses must strategically expand their online presence to meet this demand. This is one of the primary reasons that domain names have become a significant point of contention in trademark disputes.

Domain name disputes are becoming a common issue

Websites are now at the center of many cases involving trademark infringement, as we have discussed in past blog posts. However, why is this becoming such a considerable issue for businesses?

Trademark infringement is often a risk when it comes to anything carrying a business’s name, logo or brand – including the business’s website or domain. However, there are only so many domain names available. And registering the domain name is not the same as registering a trademark, even if it gives businesses exclusive rights to use that name for their website.

This can lead to disputes over similar domain names and confusion for consumers. In some cases, “trademark trolls” will even register several domain names just to hold a monopoly. As e-commerce increases each year, becoming a larger influence in a business’s strategy, it is critical to take the proper precautions to protect the online presence of a business.

Should business owners trademark their domain name?

Trademarking a domain name is often a beneficial route for businesses to protect:

  • The financial investment they made in creating an online presence
  • Their consumer base using their website and seeking their service
  • Their brand, especially if the domain name is connected to the brand

Establishing a trademark also gives businesses legal rights to act if another individual or entity infringes on their domain name and creates confusion.

It is important to note that not all domain names can be trademarked. The domain name must meet the qualifications of a trademark, and business owners must still go through the steps of registering the trademark.

Even so, business owners also must take great care when selecting a domain name. They should use an easily recognizable name, but one that is not similar to others in use so they can avoid accusations of infringement themselves.