Trademarks in the digital world – what difference ?
From reserving your domain name(s) and creating a new website to setting-up your brand strategy via digital communication tools, your marketing & communication actions need to be aligned to your IP portfolio to back-up legal needs. There are several traps business regularly fall into, that one can easily avoid by adopting the following habits.
Choosing the right brand for the right domain name
We all know that effective brand names created by a M&C agency/team are not very performant trademarks on the legal side. A good balance needs to be found between both worlds to create solid marks. You may want to favor:
1. Brand names that are invented words, not common names
2. Brands that avoid composite structures, with several descriptive words
3. Short and easily typed (think orthography and keyboard) brands, in all languages
Being able to reserve the right domain name(s) to support your business and offer you sufficient legal protection is more about standing out than finding the only blank spot in a crowded field.
This means looking for availability of names (roots) before the “dot” as well as ensuring that the chosen name can be reserved in many extensions (after the “dot”).
Building a domain name strategy and portfolio
Domain names will be the way to anchor your registered trademark in various dimensions of the digital world. Your chosen business strategy in terms of markets (geographical and product) should guide you in selecting a list of interesting domains for your business.
Making a list of potential domains of interest, checking their availability, readapting your business strategy (or even your name) if the main domains of your choice are not available are necessary steps in this exercise.
Owning more than one domain name is a healthy defensive measure. While your central domain name will host your activities (website, online store), all other domains in your portfolio will ensure no one gets close to your business.
Remaining aware of others
Digital communication agencies will organize your campaign, optimize your website, make a list of keywords for optimal SEO and rankings. With the right brand name and a family of domain name registrations, the marketing team should easily place your business at the top of the list.
Keeping a close eye on your competitors as well as any newcomers wanting to tailgate your success is the next step for optimizing your rankings.
A domain name watching service enables you to detect any new registration made by third parties with similar terms and extensions that you did not reserve.
Based on your trademark registrations, obtaining a transfer or deletion (take down) of infringing domains is possible. This is possible not only through the abuse control mechanisms of Domain Registrars but also through the Uniform Dispute Resolution Procedures (UDRP) in place at WIPO and in front of other legal bodies, which are technically legal claims leading to a decision subject to enforcement.
Alternative, softer dispute resolution solutions also exist, such as de-ranking and de-listing of infringing domains, so as to maintain a top position of your assets in the searching results.
Strict conditions apply to enforcement measures, therefore, benefiting from a solid IP right portfolio composed not only of trademarks but also of domain name registrations is key to success.
