Today (26th April) is World Intellectual Property Day. WIPO, the World Intellectual Property Organisation, gives advice on domain names and IP-related issues:
If you pick a name that is distinctive, users may more easily remember and search for it. Ideally, it should also be distinctive enough to be protected under trademark law, because domain names can be protected as trademarks in some countries. However, if you picked a very common domain name (e.g. “goodsoftware.com”), your company could have difficulty in building up any special reputation or good will in this name and more difficulty in preventing others from using your name in competition.
You should pick a domain name that is not the trademark of another company, particularly a well-known trademark. This is because most laws treat registration of another person’s trademark as a domain name as trademark infringement, also known as ‘cybersquatting’, and you might have to transfer or cancel the domain name, and also pay damages. Also, most domain names are subject to a dispute resolution procedure that allows a trademark or service mark owner to stop the cybersquatting of their trademark. There are various databases that you can search on the web to determine if your choice of domain name is a registered trademark in a particular country. WIPO has established a Trademark Database Portal to help you do this search.
Some unscrupulous people have made a practice of cybersquatting, usually to extract money from the rightful owner of the name or to mislead or confuse consumers. If you find that your trademark or service mark is being cybersquatted, there is a simple online procedure you can go through where an independent expert will decide whether the domain name should be returned to you, and the registrars are required to follow this decision. This Uniform Administrative Dispute Resolution Policy (“UDRP”) was first recommended by WIPO as a result of its Internet Domain Name Processes and then adopted by ICANN, and you can find information about it at WIPO’s site.
In addition to trademarks, it is wise to avoid domain names that include certain other controversial words such as geographical terms (e.g. Champagne, Beaujolais), names of famous people, generic drug names, names of international organizations, and trade names (e.g. name of another person’s business), that might interfere with the rights of others or international systems of protection.
If you would like to speak to us about registering your choice of name, do get in touch with our friendly helpdesk.
