domain names
a short guide
What is a domain name?
A domain name is simply the address of a website. With so much
business being done on the Internet many companies choose a domain
name that consists of, or includes, a trade mark. However, it is
important not to confuse a domain name with a trade mark, especially
when it comes to registration.
Should I register my trade mark as a domain name?
If you do not intend to use your trade mark as your domain name then
there is no real purpose in registering the trade mark as a domain name.
If you do intend to use your trade mark as your domain name, then the
answer is, yes. It is more important, however, to have your trade mark
registered in the countries where you are doing business.
Should I register my domain name as a trade mark?
Yes. We would only advise including the designation ".com" or ".co.uk",
for example, if you are genuinely using the entire domain name as a
trade mark as in the case of "lastminute.com" and "hotels.com". If the
domain name is used solely as the address of the website, we would
recommend only registering the distinctive element of the domain
name i.e. "marks-clerk" and not "marks-clerk. com".
How do I register my domain name?
The first step is to undertake a search to establish whether the domain
name is available for registration. A normal search will simply indicate
whether or not the identical name has already been registered in that
country. A more comprehensive search will establish whether similar
names have been registered in the same or other countries. If the
search is clear, you should reserve the new name with the appropriate
registry. Upon payment of the required fee, the domain name is
registered and in some cases a certificate is issued.
How long will my domain name registration last?
In most countries the domain name is, initially, registered for 2 years. It
must be renewed at the end of that period and annually thereafter.
What if I forget to pay the renewal fee?
If the renewal fee is not paid, the domain name becomes available for
others to register on a "first come, first served" basis. Marks & Clerk will
undertake, without obligation, to notify you when the domain name
becomes due for renewal and to effect payment of the renewal fees
on your behalf.
Can I transfer my domain name to someone else?
Yes, a domain name may be transferred or assigned. The transfer is
effected once the correct paperwork has been completed and sent to
the registrar and the register has been updated.
However, in some countries a transfer can only be effected by
simultaneously cancelling the existing registration and filing a fresh
application for registration. If the two actions are not co-ordinated
there is a theoretical possibility that someone else could reserve the
name in the intervening period.
What happens if there is a dispute regarding ownership
of my domain name?
Most domain name registries now operate a Dispute Resolution
Procedure that is relatively quick and cost-effective. This means you do
not necessarily have to resort to litigation in court.
Will my domain name protect me in other countries?
No, domain names are granted by national registries and are effective
only in that country. Registration at one registry does not provide any
priority for registration in other countries.
Can I register my domain name in other countries?
Generally, yes. However, in some countries it is necessary to have a
local company or a real and effective place of business in that country
before a domain name will be granted.
How do I register my domain name in other countries?
Assuming it is not necessary to incorporate a local company, the
registration procedure is similar in most countries. The name is
reserved and, once the fee is paid, the registration is granted.
What if someone else registers my trade mark as a
domain name?
The activities of so-called "cybersquatters" are being gradually
restricted. Generally, such activities can be curtailed if appropriate
trade mark registrations are in place. It is more problematic when a
legitimate business wishes to adopt a domain name that is the same
or similar to your trade mark. The outcome may depend on whether the
other company is involved in a similar business or whether they trade
in the same country. The trade mark rights of both companies may also
be a determining factor.
domain names
Is there anything else I should consider?
With the increasing importance of the Internet in all aspects of
business and the growth in e-commerce, it is important to ensure that
your business is in a position to meet these challenges. We recommend
the adoption of a domain name registration strategy as part of an
overall trade mark registration strategy. You should consider carrying
out an audit of your trade marks and domain names.
How can Marks & Clerk help?
Marks & Clerk advises on all aspects of intellectual property. For more
information and to find out how Marks & Clerk can help you register
and protect your domain name and manage your IP portfolio, contact
your usual Marks & Clerk attorney or a member of our trade mark team
at your nearest Marks & Clerk office. Full details are on our website
www.marks-clerk. com.
The information within this guide is intended to provide a summary of the subject
matter. Readers should not act or rely on information contained in this guide without
first obtaining specialist professional advice.
a short guide
www.marks-clerk. com
漏
copyright Marks & Clerk 2007
search
