Domain name and trade mark conflicts
Intellectual property issues related to internet domain names, including relationship and conflicts between trade marks and domain names
A domain name in and of itself is not the same thing as a trade mark.
A domain name is part of an internet address which locates a specific space on the internet. Unlike trade marks, domain names are global and must be unique - one domain is only available to one user (ie one website).
Trade marks, on the other hand, can overlap in different industries and geographical locations. This can sometimes lead to disputes about the right to register a domain name if it conflicts with an existing trade mark.
This guide looks at the different intellectual property issues related to internet domain names. It explains the relationship between trade mark and domain name and examines the common legal issues that can arise.
It also considers if you can register a domain name as a trade mark. Finally, it suggests ways of resolving domain name trade mark disputes.
If you hold a .eu domain or want to register one after 1 January 2021, see registering and renewing .eu domain names in the UK.
Relationship between trade mark and domain name
Find out what the differences are between domain names and trade marks, and why this matters to your business
Domain names and trade marks can sometimes seem similar, although they are entirely different things.
Difference between domain name and trade mark
Often a business will use its business name, brand name or another business identifier as its domain name. However, unlike trade marks, domain names are:
- global
- unique by nature
- can't be shared between two websites
Registering a domain name doesn't automatically give you any rights over the matching trade mark. You can only gain this right by registering your domain name as a trade mark.
Trade mark vs domain name
Here's a quick look at the differences between domain names and trade marks.
| Details | Domain name | Trade mark |
|---|---|---|
| What is it? | A domain name is a unique string of letters that is a part of an internet address. It is common for a domain name to be the same or similar to a trade mark or a business name. | A trade mark is any sign which can tell apart your goods and services from those of your competitors. See what is a trade mark. |
| What is it used for? | Domain names are used to locate and bring users to a specific website or place on the internet. | A trade mark is used to identify and distinguish your goods or services in the marketplace. |
| Do I need to register it? | Yes. You can submit a registration to any . | No, but it in most cases it would be wise to do so. Read about the benefits of trade mark registration. |
| Why should I register it? | Registering a domain name gives you exclusive rights to use that domain for the duration of the licence period. | You can protect a registered trade mark by law. Read about protecting registered trade marks. |
| Does it expire? | Yes. You can agree the expiration term when buying the domain and renew indefinitely (subject to paying renewal fees on time). | Yes. UK registered trade marks last ten years, after which you can renew your trade mark registration. |
You will only be able to register a domain name if it hasn't already been used by someone else. Avoid registering a domain name that uses or is similar to a competitor's brand name or trade mark, as this can lead to disputes.
In most cases, trade marking a domain name can help protect your business' identity, reputation and profit. Find out if you can register a domain name as a trade mark.
Can a domain name be a trade mark?
You can register a domain name as a trade mark - learn about the rules and procedures that apply
Domain names can be registered as trade marks. They are subject to the same rules and standards as all other types of trade marks.
It's important to note that registering a domain name doesn't automatically:
- make that name a trade mark
- give you exclusive rights to use and protect that name
Why trade mark a domain name?
There are several reasons why you should consider trade marking your domain name. Trade marks are generally:
- more valuable than domain names
- more easily protected, both under common law and statutory protection
Trade marking your domain name will:
- give you legal rights over the name in the country where the trade mark was granted
- prevent others from using a similar domain, if this would cause your business disadvantage or disrepute
- reinforce your brand name and ensure visibility of your business online
Read more about the benefits of trade mark registration and find out how to register a trade mark.
Process of trade marking domain names
To qualify as a trade mark, the domain name must:
- perform a greater function than simply being an internet address, eg identify that particular business on the market
- be distinctive as a source of origin of particular goods and services
The name must also be available if you wish to register it as a trade mark. You will need to carry out a clearance search to determine if earlier trade marks exist. See how to search for trade marks.
It must also meet all other requirements for trade mark registration. It will have to be distinctive and sufficiently different from other registered trade marks, and you will have to define all the goods and services you want your trade mark to cover.
Find out more about registering trade marks.
Domain name trade mark disputes
An overview of the types of domain name disputes, most common problems around domain names and trade mark infringement, and how to avoid or resolve them
If you own a registered trade mark, you are not automatically entitled to use that mark as a domain name.
This is because it is possible to register the same trade mark:
- for different classes of goods or services
- by different proprietors
- in different territories
Domain names, on the other hand, are global and have to be unique. Registration is on a first come first serve basis, putting pressure on businesses to be the first to register.
Types of domain name disputes
The most common types of domain name disputes arise when you find out that:
- someone has registered a domain name of your choice before you have attempted to register it
- you have registered a domain comprised of a name that is already in use as a registered trade mark, and the trade mark owner objects
- a business of similar or same name as yours is challenging your entitlement to the domain
- someone is cybersquatting your chosen domain, ie has registered it in bad faith to gain commercial advantage
- someone has created a gripe website, also known as a 'sucks' website, involving a domain devised in bad faith or devoted to mockery or critique of a person, place or business
Legal remedies for domain name disputes
Your options for resolving disputes may include:
- cease and desist letters to registrants
- - for resolving .uk domain name disputes
- - for disputes over generic top level domains
- defending trade marks against infringement - if someone is misusing your trade mark rights
- court action
If you feel that someone has registered a trade mark or a domain name unlawfully or in bad faith, you should take legal advice before contesting the registration. .