If you run a website for your business, then you’ll have a domain name. Often, this is the name of your business itself or an abbreviation. For example, if your business is called ‘D&W Accounting’, then your website’s domain name might be www.dwaccounting.com.au. In order to launch your website, you need to register your domain name and pay a fee to use it for a certain period of time. However, when this expires, it is your responsibility to renew your domain name. If it expires, then it will become publicly available for someone else to register. Domain name registrations similarly work on a first-in, first-served basis, except for where there is pre-existing trademark protection in place.
Having a registered domain name is crucial for any business wishing to have an online presence. Further, having a domain name which reflects your business is crucial for branding and bringing in customers online. Despite this, the actual legal protection domain names offer is limited. This is because registering your domain name alone does protect your business’s exclusive use over it. In this sense, having a domain name does not mean your name cannot be used elsewhere.
Domain names and trademarks
A registered domain name and a registered trademark may look similar at first glance, but they are very different. Legal disputes and conflicts can often arise as a result of the confusion between domain names and trademarks. Domain names do not carry legal rights. Put simply, trademarks mean you can take legal action if someone infringes your rights, whereas domain names do not.
Limitations of a domain name
One of the key limitations of a registered domain name is the lack of proprietary ownership.. Having a registered domain name does not give the registered party any proprietary rights to the name. Instead, the registration is a contract between the registered party and the domain registrar which entitles the party to use the domain name for a specific period of time or until their ‘license’ expires. In this sense, ownership of your domain name isn’t ever transferred to you when you register a domain name.
Given that domain names are licensed for a set period of time, they will expire after the contractual period ends. In situations where a domain name is heavily sought after or has been appropriated by other businesses, the brand or business identity may be vulnerable to encroachments from other competitors.
How can I protect my domain name?
1. Check that your domain name and trademark are both available to register
Once you’ve decided to start a website for your business, you should check that your name isn’t in use by anyone else online. You can do this by first searching your proposed website name on auDA’s Whois lookup. If it’s available, then you should also search your business’s name on IP Australia’s Australian Trademark Search tool. If both names are available, then you can continue to register your domain name. In the event that a trademark has been registered that is substantially similar to your domain name, you should not register your domain name as you will be infringing somebody else’s trademark.
You want to register ‘www.hwflowers.com.au’ as a domain name. Your floristry business is called ‘Harry Wilson Flowers’ and you have registered a trademark for this name. However, on the other side of the country there is another florist named ‘H&W Flowers’. They have registered a trademark and have lodged an objection to your domain name registration on auDA. Because of this, you cannot register this domain, and instead have to register ‘www.harrywilsonflowers.com.au as your domain name.
2. Apply for a trademark
The only way for a business to gain permanent ownership of their domain name is by registering it as a trademark. A registered trademark provides the owner with the exclusive right to use, sell and license a trademark. Only a registered trademark provides proprietary protection against unauthorised use in Australia. It also allows owners to effectively protect and promote the reputation of a brand or business. You should also register your business’s other intellectual property assets including your business name, logo and slogan. If someone registers a domain name that infringes on your trademark, then you can lodge a complaint with auDa and have the registration cancelled.
It’s important to note here however, that not all domain names can be trademarked. In order to register a trademark for your domain name, your name must be more than merely a direction to the source of your webpage or information regarding the webpage.
3. Renew your domain name before it expires
It’s important to remember that domain name registrations are not permanent. Registering your domain name effectively works as a lease, where upon expiry, it becomes available for someone else to register. Make sure you know when your domain name expires and renew your registration prior to this date. There have been instances where a popular or well-known website’s domain name has expired, to be purchased by someone else. If this happens, the new domain name holder can choose to continue to use the website or sell the domain name back to you. Either way, having your domain name expire is an administrative headache that is best avoided.
Protecting your domain name
The best way to protect your domain name is to solidify your intellectual property rights by registering a trademark. Before this however, you should be diligent in checking that your name is available as both a domain name and a trademark. To check that your domain name is available for trademark protection, you should consult with a trademark lawyer. From there, your lawyer will assess the nature of your domain name and business to provide you with advice on how to best protect your domain name.