NDD - domain name and trademark

The link between trademark and domain name (DND)

The domain name (DND) and the trademark often cross paths, especially when there is a dispute over a name. But what exactly are the links between them, and what makes them different?

The differences between a trademark and a domain name (DND)

  • A trademark is a title of industrial property, obtained thanks to a registration with a trademark office (INPI, EUIPO...). It allows to engage actions which are not accessible to the simple holder of a domain name: action in counterfeit, seizure against counterfeit...
  • The domain name (NDD) corresponds to an Internet address. To obtain it, you must make a reservation with a registrar.
  • A trademark is registered for 10 years. A domain name (NDD) is generally reserved for 1 year.
  • Several identical trademarks can coexist on the INPI registers, whereas there cannot be two identical domain names in the same extension. Indeed, the INPI does not prevent the registration of a trademark that is identical to an existing trademark (it is up to the owner of the oldest trademark to act to defend his rights - hence the importance of monitoring). On the other hand, a registrar is unable to allow the reservation of two identical NDDs, for the same extension, because it is a unique address allowing access to a single site. But two domain names with different extensions (e.g. monsite.com and monsite.fr) can coexist, since each NDD corresponds to a different site.
  • A trademark can be registered in different visual forms (name, logo, 3D shape...), whereas a domain name is necessarily a verbal name, without any graphic element.
  • A mark is registered for specific products and services its protection is limited to the latter. A domain name is reserved in an absolute manner, without its holder having to inform his activity: it will however be protected only for the activity exploited on the website in connection with this domain name.
  • A trademark is protected from the day of its filing, whereas a domain name is only protected from the date of the beginning of its exploitation.
  • The trademark must be distinctive to be registered (it cannot a priori describe its activity - except in special cases). This condition does not exist for the NDD: it is therefore possible to reserve a generic name as a domain name.

The links between the trademark and the domain name

  • Both the trademark and the domain name are renewable indefinitely, provided that to think about renewing them before expiration. Otherwise, a third party could try to appropriate them.
  • They both represent prior rights that can be invoked against a later mark. Since December 11, 2019, the domain name, like the trademark, may be invoked in support of a opposition before the INPI. For this to happen, however, the NDD must predate the trademark and correspond to an exploited site.
  • An earlier trademark allows the recovery of an identical or similar domain name registered in bad faith: the trademark owner can use the UDRP, UDR or SYRELI procedure to recover a domain name (more information on the SYRELI procedure to recover .fr NDDs).

Practical advice

A domain name does not replace a trademark

Even if the holder of a DOB can take more and more actions, these actions are more difficult to implement. Indeed, the domain name holder will often run into problems of proof, especially of the date of his rights. These rights start when the site is available, and it is often complicated to prove since when the latter is active. Also, the action for unfair competition requires to bring proof of the damage suffered, which is sometimes impossible. On the contrary, the infringement action conferred to the trademark owners does not require to prove the prejudice (it is enough to demonstrate that there is a risk of confusion for the consumer).

It is therefore strongly advised, when you plan to use a name, to register the corresponding trademark in order to give you the maximum chances in case of dispute.

Searching for anteriorities among domain names

Before registering a trademark, think about carrying out prior art searches among domain names. This search is important because it will make it possible to see if the name you plan to register is not already in use as a domain name for a site in your field of activity. If this is the case, it is preferable to turn to a different name.

An unavailable NDD can defeat a trademark project

When registering a trademark, it is imperative to check the availability of the corresponding domain name in an extension that suits you. Indeed, even if the domain names identical to your trademark project are unused, or used for sites that have no connection with your business, it is important that you have visibility on the Internet. Today, it is very rare that a company can do without a website for its communication.

Therefore, if there is no interesting extension available for the name you plan to register as a trademark, it may be wiser to move to a new name, which will allow you to reserve the corresponding domain name.