Trademarks and Domain Names: The Battle for Brand Protection
Think about your domain name; perhaps Intelsat.com, Iridium.com, Viasat.com, or Eutelsat.com. What does it mean and how much is it worth? How does it relate to your name brand? What are your options when someone, other than your company, obtains a domain identical or similar to your company name, or one of your products?
The rapid development of the commercial Internet created a situation ripe for conflict between trademarks (brands) and domain names. Initially, litigation was the only way to resolve these issues. Today there are other options. Companies in the satellite industry, being global by nature, should be mindful of the issues affecting domain names and trademarks.
How much is a brand worth? In 2011, Interbrand, a brand valuation company, valued the Coca Cola and Microsoft brands at around $70 billion each. Other valuable brands include IBM, GE, Google, Disney, Apple, and McDonalds. A brand can receive the most protection when trademarked.
However, trademarks are only protected in the country or countries where they are registered or used. There is no such thing as an “international trademark.” Trademarks are also product specific. For instance, an “Intelsat” trademark for satellite services will not prevent someone from registering the same trademark to sell shoes.
Characteristics of Domain Names
The domain name system (DNS) is the system of global navigation used by the Internet. A domain name points to a specific Internet address such as 220.127.116.11. Domain names are available on a first-come-first-served basis and may be obtained through a number of accredited registries. Registering a domain name is cheap and easy; for as little as $2.99/yr, anyone can register a domain name in a few minutes.
Unlike trademarks, domain names are not considered intellectual property. Rather, the “owner” of a domain name enters into a contract with the registry to use that domain name under the registry’s conditions for a fixed term, which is renewable. If upon expiration the domain name is not renewed, it will be fair game for anyone else to register it.
Trademark/Domain Name Disputes
Trademark/Domain name conflicts first came to light when a journalist registered the domain name Mcdonalds.com. A dispute arose between the journalist and the hamburger giant. While this dispute ended amicably with the journalist assigning the domain name to McDonalds Corporation, other disputes have resulted in prolonged and expensive litigation. This was the case when Panasonic.com, Kaplan.com, and other well-known brands fell victim to “cybersquatters.”
Cybersquatters are individuals that register domain names in bad faith with the intent to profit from the goodwill of a trademark belonging to someone else. Other common forms of cybersquatting include using misspellings (e.g., Macdonalds.com) or confusing names (e.g., Coca-coladrinks.net). These later types of cybersquatters divert traffic from real websites in order to cash in on advertisement clicks.
A timely registration of a $2.99/yr domain can turn into a treasure. While there is no established valuation mechanism for domain names, it is reported that business.com sold for $7.5 million and sex.com for $12 million.
As the number of trademark/domain name disputes rose, a regulatory body for Internet addressing was created: the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a private U.S. non-profit corporation whose board of directors consists from representatives from around the world. ICANN set out to create a Uniform Domain Dispute Resolution Policy (UDRP). It is now mandatory to resolve trademark/domain names through the UDRP.
Brand protection is a concern; especially for companies with a global reach such as ones in the satellite industry. Domain names convey a powerful message and are part of the brand image. We all should be mindful of the potential trademark infringement and brand dilution that can occur through cybersquatting.