What is the difference between a domain name and a brand?

Many wonder what differentiates the domain name from the brand, and how they interact. 

Let's start with the differences:

• A domain name is not an industrial property right, unlike a trademark. This means that it does not benefit from the same protection, and in particular that it cannot be defended through an infringement action, which is reserved for intellectual property rights. 
• Each domain name is unique in each extension: two people cannot reserve the domain name "depot-de-marque.com". Whereas it is possible that two different holders may each have an identical trademark.
• A domain name is reserved with a registrar, a trademark is registered with an intellectual property office, such as the INPI or the EUIPO. 
• The reservation of a domain name is not made in connection with goods and services, unlike a trademark. The domain name can be used for any activity, but will only be protected for the activity actually exploited in the website. Whereas a trademark is protected for all goods and services covered by its wording, even for those it does not use (at least for 5 years).
• The conditions for obtaining a trademark are different. To be registered, a trademark must be available and distinctive A trademark that describes its activity may be refused by the registration office. On the other hand, there is no procedure for examining a domain name when it is reserved. It is therefore possible to reserve and use a descriptive domain name. 

Despite their differences, trademarks and domain names belong to the large category of distinctive signs. As such, they often cross paths, particularly in litigation:

• An exploited domain name constitutes an anteriority that can be invoked against a trademark. For example, if you own the domain name splash.com to offer boat touring services, and someone registers or uses the SPLASH trademark for the same or a very similar activity, you can object to it. But be careful, this only concerns exploited names: the simple fact of reserving a domain name does not protect you. 
• An earlier trademark can be used as a basis for a UDRP, UDR or SYRELI action to obtain the cancellation or transfer of a later domain name that was registered in bad faith.

Note that reserving a domain name does not exempt you from registering a trademark. This registration is never compulsory, but the protection of the trademark is broader, easier to implement, opens up a much wider range of actions and is more effectively valued. In particular, it should be noted that in France, the opposition procedure before the INPI is not open to domain name holders. Find out more about the opposition procedure.

Finally, from a more practical than legal point of view, if the trademark you are planning to register is not available as a domain name in a current extension such as .com or .fr, this can harm your visibility on the Internet. If the latter is very important to you (which is often the case now), it is better to change your trademark project. Indeed, your trademark will not be opposable to a previous domain name. If the extension you are interested in is not available, you will not be able to obtain its transfer.

Our advice In a trademark registration strategy, make sure that your proposed trademark is also available as a domain name in the extension(s) that interest(s) you. And above all, once your trademark has been registered, it is advisable to reserve the extensions that interest you very quickly, to avoid any cybersquatting.

Visit the AFNIC website to learn more about domain names.