Brands and Domains

The identification of companies and their products and services gives distinctive signs an important role.

Trade names and trademarks should be adequately protected through appropriate industrial property registration.

To this, an issue that is generally taken into account by entrepreneurs, we must now add the phenomenon of domains, which have become absolutely essential.

Domains are the alphabetic, numeric or alphanumeric codes that allow companies to be identified and located on the Internet and that also allow websites and e-mail addresses to be easily remembered. It is therefore in the owner’s interests for domain names to consist of simple signs or words that can be easily remembered and associated with the relevant business. It is therefore normally appropriate for such signs and words to coincide with those that make up the marks used by the undertaking, as these are already known to consumers.

There are several types of domains. We should differentiate between generic domains (.com, .net, .org), which are international in scope, and territorial domains (.es, .fr, .it, etc.), which are national.

The former are managed by the supranational organization Internet Corporation for Assigned Names and Numbers (ICANN) and governed by the principle of “first come, first served” (the first one who requests it is the one it is assigned to), while the latter are managed by each individual country (in Spain’s case, a public entity, the Spanish Technical Television Network), and are regulated by much more restrictive rules, which involve a prior check that the sign that makes up the domain name coincides with the company name or an acronym usually used by the company, or with a trademark, registered with the Spanish Patent and Trademark Office.

Regardless of the domain or domains registered by companies, the fact is that they do not confer any rights other than the right to use them for Internet addressing purposes. In practice, however, given the global dimension of the Internet, domains can become even more important than trademarks.

The different nature of domains and trademarks and the lack of connection between the various systems for their respective registration gives rise to conflicts which, while they may initially seem difficult to resolve, end up being settled by determining who is most entitled to the distinctive sign constituted by the domains and trademarks in question.

Although there are various types of conflicts between domains and trademarks, the most frequent are those that involve the misappropriation, through the registration of domains, of third-party distinctive signs that are legally protected by trademarks.

Such disputes can be resolved either through the relevant court proceedings or, where a generic domain has been abused, through a procedure called the Uniform Domain Name Dispute Resolution Policy, which was adopted by ICANN on 24 October 1999 and remains in force, and which provides for a resolution within an extremely short period of time (35 days). If this resolution agrees with the trademark owner, ICANN proceeds with the cancellation of the domain registered in bad faith, unless the owner proves that it has filed the corresponding legal action within ten days after receiving the resolution.

Another type of conflict, which is more difficult to resolve, is one that may arise between a domain registered by the owner of a national trademark which is identical to another trademark registered for totally different goods or services, given that in matters relating to domains there is no special rule similar to the one that applies to the trademark system, in which trademarks are granted to distinguish certain goods or services.

Finally, conflicts may arise in the registration of different domains in the event that the names of the respective applicants coincide, i.e. companies incorporated in different countries with identical names would have the same right to the domain.

Bearing in mind that it is not possible to register all existing domains (in addition to the various generic domains, there are territorial domains, third level domains, sub-domains, etc), it is advisable for companies to protect their trademarks at a national and international level, in order to have a preferential right that will allow them to defend the right to the signs that constitute such trademarks on the Internet against domains that may infringe them.