Marking Your Domain (Name): Tips for Locking in Your Business’s Dot Com

 

7 April 2017
Posted by Suzy Wood

At Studio Legal, we’re known to harp on from time to time about the importance of protecting your brand. You’ve no doubt heard us talk about our golden rule (get trade mark clearance before settling on a name for your business, and then register your mark!). In today’s blog, we introduce the cousin to our golden rule: check that the matching domain name is free, and then register it as soon as you can.

Domain name issues have been known to thwart many a well-laid business plan. To help you dodge last-minute dramas, here are our answers to some of the most common questions we are asked about domain names and trade marks.

Help! The domain name I want is taken, and the owner is trying to sell it to me for a huge profit. What can I do?

This is one of the most frustrating situations encountered by new businesses. You’ve locked in an amazing brand name (and maybe even started promoting your brand and paying designers and branding agencies), then turn to what should be the simple administrative task of registering the .com for your brand, only to find that it’s taken! And to add insult to injury, the registered owner is just a “squatter” who has no interest in actually using the domain and is demanding thousands of dollars to transfer ownership to you.

As a first step, we recommend you consider alternatives that won’t require you to rebrand. Get creative: think about adding an extra word (e.g. instead of orange.com, try orangetechnology.com), or using a different top-level domain (e.g. if the .com is taken, consider alternatives such as .com.au, .net, .co or .it).

If you’re dead-set on using that domain, you might have legal grounds to have the name transferred to you, under the auDRP (the .au Dispute Resolution Policy) or the UDRP (the Uniform Dispute Resolution Policy – for .com, .org, .net and other “global top level domains”). These processes should be approached with caution, however. You’ll need to show that the domain owner has no legitimate interests in the name, and the domain was registered and is being used “in bad faith” (the auDRP is a little less stringent, and only requires that the domain name be registered or subsequently used in bad faith). Contact us for advice on the strength of your claim. We can also prepare an initial letter of demand to potentially resolve the dispute before you need to commence proceedings.

Otherwise, from a more commercial perspective, you can always enter into negotiations with the owner to try to whittle down the amount they’re asking for. We have seen businesses successfully haggle the price down to something far more reasonable than the initial asking.

How do I find out who registered a domain name?

You can do a “deep” search on WHOIS to find out who registered the domain and when their registration is due to expire. Remember that sometimes, the entity used to register the name will be different to the company or person who is actually operating the website.

I’ve secured the domain name for my brand. What’s the benefit of registering a trade mark too?

Having a registered domain name doesn’t give you exclusive rights to trade under that name: all it means is that you’ve got that website address (for as long as you keep paying the domain registration fees). So if you register the domain orange.com for your tech business, and then a competitor launches offering similar services using that name, simply owning the domain does not give you the legal right to prevent the competitor using that name.

A trade mark registered with IP Australia is the best way to obtain Australia-wide exclusivity in a trading name for the goods and services your business offers. It will give you enforceable rights to prevent other traders from using your mark in your industry.

Contact our trade mark lawyers and domain name disputes lawyers today on (03) 9521 2128 or email trademarks@studiolegal.com.au for assistance with setting up your business!

DISCLAIMER

The information in this article is of a general nature. It does not constitute formal legal advice, and should not be relied on as such. Please see the full disclaimer in our website terms. Please contact Studio Legal if you are seeking advice about a specific legal matter.