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Richard Magnusson — 12/06/20

Start-up / Scale-up? Do’s and don’ts regarding domains and trademarks!

“Domain investors monitor trademark activity and register domains as the application is filed, therefore make sure you pick up the domains that are important for your business either together with or before submitting a trademark application.”

Are you a start-up/scale-up? In this post we provide you with important angles to consider when expanding your business. Why are domain names important assets for your growing company? And how should you manage your domains related to trademarks?

How Important are domain names?

Domain names are integral for any business, of course for email and website as a fundamental, but they’re also the digital extensions of your protected trademark registrations and intellectual property that have an inherent value, which they retain. As an example, consider how much the digital asset/domain google.com is worth to Google, or apple.com to Apple. It’s not millions, it’s billions.

If your domain matches your business name, it reinforces your brand, making it easier for customers to remember and return. It will also be easier to win business via word of mouth because customers will remember your name and pass it along to friends. Essentially, increasing awareness. This makes a domain that’s easy to remember (and spell) an important investment for any business.

The bottom line is that a good domain name can go a long way toward generating traffic to your website and building your reputation. That, in turn, will result in more customers/business.

What’s important as well to know is that each market has their own unique domain name extension, TLD (top-level domain), run by its own registry, with their own unique sets of rules – (some requiring local trademarks or organization numbers, for example the Norwegian TLD .no). Different markets also have varying use of their own local domain, for example Finland and Russia where the locals predominantly tend to use .fi and .ru, it’s very important to understand which markets you should register/acquire the local domain for, if you intend to or already are actively trading in these regions.

 

Get an effective domain strategy related to your trademarks

What’s important is to ensure you are maintaining a cost-effective portfolio whilst getting as much value as possible. You want to be protected and present in the digital space.

The way to do this is by having a clearly defined strategy for domain names that tie into your business goals and trademark strategy. Primary markets or active markets should always be registered. We then typically work within a time frame for expansion to select which markets to own as well, for example, you’ve registered a few key markets using trademarks, but there are future markets that you want to breach.

And you can also use domains as a more cost-effective extension to your trademark on markets where you’ve not registered yet. Domains are cheaper to register than a trademark, and if you control the digital space you are severely limiting potential for ”copy-cats/infringers”.

As you grow, you most likely have to consider further protective domains and misspellings to protect your brand and customers. But this is the best starting point.

 

Manage domains safely, as important IP

A lot of businesses starting out by registering a .com and potentially the TLD of the starting market. Which is good, because the .com, if it matches your brand and is rememberable and short, is the most important domain in your portfolio. It’s typically registered by the founder by using a quick, cheap online service.

However, it’s important from an early stage to create a clear policy of who within the business is responsible for the management of these crucial assets and who has access to them and also where these domains are registered. A lot of the time, a common issue we see as a company goes through the early stages of start-up through to scale up, is people losing control of their assets. Different people register, under different information, through different providers. Leading risks in the administrations such as missed payments, or lost communication from registries/registrars that lead to the loss of an asset. This sometimes ends up being extremely costly because the domains typically gets picked up by domain investors.

Therefore, as early as possible, shift to a provider that removes the administrative burden, gives proactive advice in line with your business needs and strategy, where you have a direct contact that can help you with any queries you have.

 

What to watch out for:

 Third Party Registrations, either limiting your presence in a local market, infringing on trademarks or used for cybercrime purposes

 We think there is an important distinction to make here. Unless you have a trademark on the domain in the region or someone is intentionally capitalizing on monetizing a typo of your trademark, no one really is a squatter in the domain name industry. They’re smart investors. They understand and recognize the value of digital assets. If you lack a trademark or other legal forms of similar use and do not have a clear/defined strategy for the domain market, you’re going to be outsmarted, and it will cost you either loss of traffic or a significant sum to retrieve.

Most domains can be retrieved through a dispute, most often called UDRP, if it infringes on your trademark and match the required criteria.

  1. The domains are either identical or easily confused with the registered trademark.
  2. The domain holder should not have their own justified interest in owning the domain. For example, a similar trademark, in another country or industry.
  3. The domain holder has to have registered the domain in “bad faith” intending to abuse your brand for monetary gain. If you ever get contacted regarding acquiring a domain where you hold a trademark, you’ve got a clear case, so don’t interact and file a dispute instead.


It’s important to know that not all markets follow this process, the most clear-cut example of this is Germany, in order to prove your right to a domain in Germany you have to go through a legal process in German court which is extremely costly. Investors are aware and typically therefore register the .de domain if you file for an EU trademark. If you intend on being international and consider Germany to be a potential market in the future. Make sure to register this domain as early as possible.

 Domain investors monitor trademark activity and register domains as the application is filed, therefore make sure you pick up the domains that are important for your business either together with or before submitting a trademark application.

 

We have gathered some do’s, don’ts and actions for making your domain management better:

 Do:

  • Consider domains as intellectual property of your company.
  • Ensure up to date legal ownership details registered on the domain. They are an asset that adds value to your business, which investors recognize.
  • Make a strategic plan from early on.
  • Register domains before or together with your trademark application.

 Don’t:

  • Register domains with different providers.
  • De-register domains without understanding their value.
  • Have multiple people register domains on your behalf.

 Actions

  • Create a domain policy that defines process and ownership internally.
  • Create a clear domain strategy in place that ties into business goals and trademark strategy.
  • Consolidate your domains with one partner that understands your business and can offer sufficient advice and guidance.