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It can be hard enough finding a domain name that is currently available to register, but there is also the challenge of staying on the right side of domain name law. Domain name registration is bound by trademark law, intellectual property law, dispute resolution frameworks, and limits on cybersquatting. These domain rules may span several jurisdictions too. Just as there is due diligence to complete when you secure a business name, there are important legal considerations and rules to remember when registering a domain name. While the following article should not be taken as legal advice, learn the fundamentals of domain trademark infringement and more below.
Understanding Domain Names and the Law
Registering a domain name binds you to a legal contract, and with that comes the obligation to abide by the ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP). If a trademarked business or other website owner disputes your use of a particular domain name, they can file a complaint and ultimately shut down or take over your domain name.
Matters may not stop there. If your use of a domain name is judged to have done any of the following:
- Attempt to ‘pass off’ your business as another business and impact its good trading reputation
- Infringe on the trademark of another business to gain a competitive advantage
- Defame another business (common with ‘gripe sites’ such as ‘x-is-a-scam’
- Register a domain name in bad faith eg. cybersquatting
You could find yourself on the receiving end of costly litigation. Remember, it is not the responsibility of the domain name registrar to establish the legality of a domain name. It is your responsibility to complete due diligence.
Trademark Law and Domain Names
As a business, you can trademark your logo, design, signature phrase or even word. You don’t even have to register the trademark for legal protection to apply. Because trademarks extend to domain names, you cannot register a domain name that infringes on the trademark of an existing business.
Choosing a different top-level domain doesn’t absolve you from accusations of trademark infringement. In the unlikely scenario that you were able to register, for example, nike.net or amazon.ai, the trademark owner would still find it relatively easy to prove that – in the eyes of the customer – you were passing off your business as theirs.
The best way to avoid any legal issues is to conduct a trademark search with the U.S. Patent and Trademark Office (or relevant body in your country) before finalizing your registration.
Navigating Domain Name Disputes
The World Intellectual Property Organization (WIPO) handles over 5,000 domain name dispute cases every year, the vast majority of which are for trademark infringement or domain squatting. Since 1999, WIPO has established itself as the global leader in resolving cybersquatting disputes and registration of second-level domains for gTLDs. WIPOs jurisdiction covers more than 80 country code TLDs to ensure that domain name system (DNS) complies with Intellectual Property (IP) law around the world.
The Perils of Cybersquatting
Cybersquatting is on the rise — up 22% according to WIPO — and the proliferation of gTLDs (such as .xyz, .ai, or .asia) means there are even more opportunities for bad faith actors to register domains that infringe on business trademarks.
What is cybersquatting?
There’s a difference between ‘flipping’ a domain name and cybersquatting. The former involves either reinvigorating expired domains (a staggering 82% of websites are inactive) or registering a domain name in anticipation of an emerging trend.
Cybersquatting, on the other hand, is the bad faith process of registering a name that doesn’t belong to you, either by outright trademark infringement or by registering a roster of similar versions, from typos to TLDs. These phony versions are close enough to the original to misrepresent or damage the business of the trademark owner.
To proactively mitigate against cybersquatting, businesses will typically register as many associated versions and TLDs of their trademarked name as is affordable. These can then redirect automatically to the primary domain, often without the user even being aware.
Understanding UDRP Proceedings
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is the framework for resolving domain name disputes according to a set of guidelines issued by ICANN. By design, the process is more streamlined (and less costly) than conventional litigation, which can take years.
How UDRP works
- The trademark holder files a complaint against the domain name registrant
- The domain name holder is notified and given the right to respond (usually within 20 days)
- An independent panel (such as WIPO), reviews the evidence from both parties and issues a ruling (usually within 60 days).
- If the complaint is upheld, the domain name can be canceled or transferred to the complainant.
- Both parties may then challenge the ruling in a court of law if they wish.
The Process of Legally Registering a Domain Name
Serious problems can occur if the legal registrant of a domain name does not provide accurate and reliable contact information, report any changes regularly, or clarify who is authorized to represent the organization in question.
The domain name registrar should check the business details and supporting documentation to ensure that no cybersquatting or domain hijacking is taking place. They must also secure full records of the billing contact, technical contact, and overall administrator so that renewals and updates are swiftly accomplished.
On the business side, you’d be surprised how many large organizations discover that their domain name is in fact registered to a web designer, who is either no longer working with the company or (even worse) has gone rogue.
To ensure that your domain is renewed in time, check the documentation includes complete details for administrator, billing, and technical support.
Protecting Your Domain Name Legally
The only way to fully secure and future-proof your domain name legally is to register for trademark protection and to register your domain with an established, trustworthy registrar. You can register your trademark with your country’s trademark office, but can also request international protection.
Be aware that registration is only half the battle. You must also be prepared to monitor activity and enforce your rights. You can use online tools (ICANN provides one) to see if anyone is using or planning to use your domain name, and should have a process already in place to respond if you spot a transgression.
International Domain Name Laws
While ICANN and WIPO provide an international framework for resolving disputes, domain name laws are not universal. That means rules might be strictly enforced in one country, but not a priority in another.
For country-code top-level domains (eg. .uk, .au), registrants will normally be required to have a physical address or residency in the country to register a domain, particularly for highly desirable TLDs such as .ai (Anguilla), .tv (Tuvalu), or .it (Italy).
Enforcing IP rights, such as trademarks, can be complex once borders are crossed. A trademark registered in one country (and language) might be legally operable in another country. For businesses operating across borders, it’s often necessary to research the local laws and restrictions for each country where trademark protection is required.
Conclusion
The key to fortifying your legal position when registering a domain name is to be proactive. That means seeking expert advice, checking the trademark databases, and choosing domain name registrars who offer legal services. The same approach applies once you’ve registered your domain name too. You’ll need to monitor the landscape regularly to check that no one is compromising your legally owned domain name.
Whether you’re registering a single domain or have hundreds on your list, you can trust NameSilo to deliver an easy, clean, and secure process. Sign up today.