In today’s digital age, a strong online presence may be crucial for a business. A key element of this presence is securing a good domain name. This blog post delves into the importance of having a strong domain name strategy and offers practical tips on protecting and enhancing your brand online.

WHY A DOMAIN NAME STRATEGY MATTERS

A good domain name is the easiest way to make your brand easy to find online and is often the first point of contact between your business and potential customers. Therefore, any business active online could benefit from a domain name strategy. A well-thought-out strategy will not only enhance your online presence but also protect your brand from potential threats and increase its trademark value.

ALIGNING DOMAIN NAMES WITH TRADEMARKS

When businesses think about protecting their brand, they often focus on filing trademarks. However, one might overlook the importance of aligning their domain names with their trademarks. By aligning domain names with trademarks, you ensure consistency and protection across all digital platforms.

HOW TO BE ON THE SAFE SIDE?

To avoid potential issues and protect your brand, consider the following steps:

• Defensive domain name registrations and being first

Identify and register relevant top-level domains (TLDs) early to prevent others from acquiring and using them in ways that could harm your brand.
Domain names operate on a “first come, first served” basis, so securing them early is crucial. Once a domain name is taken, acquiring it can be challenging and costly, especially if the current holder is using it legitimately.

A clear and recent example is Amazon’s inability to secure the .BE domain in Belgium. Last year, Amazon announced it would launch a Belgian website. Despite having multiple domain name extensions for different countries, Amazon was unable to secure the .BE domain. Instead, they had to opt for amazon.com.be because amazon.be was already taken by Baloise Insurance. It seems that Amazon did not take any legal action, this might have been because the domain is not being used in bad faith.
An important element necessary to act against the registration of a domain name incorporating your trademark is bad faith. If the distinctive character of a trademark is rather low, such as trademarks consisting of common words, it will be difficult to prove that the respondent registered the domain name in bad faith and should have known about the existence of the trademark before registering it.

In a recent case it was decided by the WIPO Arbitration and mediation center that selling fraudulent products is a clear case of bad faith. The domain name olaplexofficial.com was therefor transferred to the complainant. In a case before CEPANI (the Belgian center for arbitration and mediation) it was stipulated that the domain name marktplaatsbelgie.be was used in bad faith as consumers were misled to believe it was the website of the complainant. When bad faith is apparent from the use of the domain name, a transfer of that domain name appears feasible.

• Domain name monitoring

Monitor new domain name registrations that include your brand name. This allows you to quickly identify and address any infringing or confusing domains. If a domain name is being used in bad faith or infringing on your trademark, it’s easier to act as it is one of the requirements for initiating an Alternative Dispute Resolution (ADR).

• Timely renewal

Domains are rented, and failing to renew them can result in losing them to others who might misuse them for phishing or fraudulent activities. Ensure that all your domain names are renewed on time to avoid such risks.

A clear and recent example of the importance of timely renewal is when ethical hacker Inti De Ceukelaire demonstrated how easy it was to acquire sensitive information through expired domain names and linked e-mail addresses. The exposure of sensitive information for a low cost is alarming and underscores the necessity of timely domain name renewals.

AUTHOR’S OPINION

A strong domain name strategy is vital for any business looking to establish and protect its online presence. This strategy should include aligning domain names with trademarks and engaging in defensive registrations and monitoring. These proactive measures can protect your brand from misuse and enhance its value. Remember, in the digital world, being proactive and prepared is always better than reacting to problems after they arise. Do not hesitate to contact us for assistance or more information.

By Zoe De Kempeneer Trademarks | Designs Attorney IP Hills | Ipsilon Group

Sources:
Inass, M. (2024), Honderden vervallen domeinnamen en mailadressen van overheidsdiensten verkocht voor 8 euro per stuk, VRT NWS, https://www.vrt.be/vrtnws/nl/2024/05/22/waarom-je-je-domeinnamen-best-niet-laat-vervallen/
CEPANI ADR, 24 november 2022, nr. 444173, marktplaatsbelgie.be
WIPO UDRP, 27 november 2023, nr. D2023-4059, Olaplex, Inc. v. 丁超 (Ding Chao)