Having a registered domain name is an important asset to every business but in many cases, the registration itself may not be able to protect your business’s exclusive use over your registered domain name.

A registered domain name and a registered trademark may look similar at first glance but the nature of protection offered to a brand or business differs greatly between the two. Legal disputes and conflict can often arise as a result of confusion between the two for both businesses and individuals. For example, when the 18 year old Kylie Jenner tried to trademark the name “Kylie” and landed herself in hot water with A-lister Kylie Minogue.

In order for business owners to better protect themselves, it is important that they are informed of the different degrees of protection, rights and consequences afforded by each. LawPath’s experienced trademark and intellectual property attorneys can advise you on how to protect your domain name.

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. No ownership of the name is ever transferred to the registered party which limits their use or ability to license or sell their domain name.

Furthermore given that domain names are licensed from a registrar 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?

Apply for a trademark

The only way for a business party to gain permanent ownership of their domain name is by registering 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.

However not all domain names are entitled to being registered as a trademark. In order to be registered as a trademark, the domain name must be more than merely a direction to the source of the webpage or information regarding the webpage. LawPath’s experienced trademark attorneys can help you examine whether your domain name can qualify for a trademark.

What should I do?

The best way to find out whether your domain name can be protected under a trademark registration is by speaking to a trademark attorney. From there, the lawyer will assess the nature of your domain name and business to provide you with advice on how to best protect your domain name.

LawPath has access to highly qualified IP attorneys that can help with your trademark. Contact a LawPath consultant on 1800LAWPATH to learn more about customising legal documents, obtaining a fixed-fee quote from our network of 600+ expert lawyers or any other legal needs.

Jennifer Wang

Jennifer is a Paralegal, working in our content team, which aims to provide free legal guides to facilitate public access to legal resources. With a keen interest in media and IP law, her research focuses on the evolving role of the law to navigate new and emerging information platforms.