Domain names, cybersquatting and social media

An effective trade marks strategy extends well beyond your packaging, logo or brand name – it extends to protecting your brand online.

With the evolving nature of the internet, managing your online presence can be very challenging. There are countless online platforms you can use to present both your personal and business brands, including websites, blogs, online stores and social media. Despite the many positives of having an online presence, it can also be difficult to stay up-to-date with digital trends and understand the rules and regulations to effectively manage your brand across a global audience.

Our trade marks attorneys are at the cutting edge of digital trade mark protection, and we can help you with all aspects of managing and protecting your brand online, from advising you on the purchase of domain names, through to practical advice on protection available to you with apps and social media.

Domain names and trade marks

A domain name is a unique, easily remembered sequence of letters and numbers linked to a less-easily remembered numerical IP address. Usually, the letters and numbers will be recognisable words or an abbreviation to assist with memorability. These words can be the name of the domain holder’s business, or frequently, a trade mark e.g. www.pof.com.au.

As domain names are unique, registration of a particular name will prevent anyone else registering that domain name. Despite this, it will not stop someone registering a domain name that is very similar to your trade mark.

We can help with the following issues relating to domain names:

• Registration/renewal of domain names including advising on eligibility.
• Managing domain name portfolios, usually in conjunction with managing other IP rights.
• Securing domain names from third parties, including advising on your options and where appropriate, handling complaints with the relevant domain name dispute organisations.
• Protecting domain names from attack by third parties.
• Drafting and sending letters of demand.

Cybersquatting

If you have a registered trade mark and you attempt to register a domain name with that trade mark, you may find the domain has already been taken. Unfortunately, this is not uncommon and trade mark owners will sometimes find their mark has been intentionally used by another in order to extort payment from the trade mark owner. This practice is known as cybersquatting.

Cybersquatting occurs when a third party registers a domain name (or several similar domain names) that infringes registered trade marks and/or the registration is considered to be in ‘bad faith’. The primary objective of most cybersquatters is to sell the domain name back to the trade mark owner at a grossly inflated price.

If you believe someone is using your registered trade mark as a domain name, our specialist trade mark attorneys can investigate the situation and work with you to have the domain name transferred to you.

Social media and trade marks

Registering your trade mark and domain name is just one part of managing your brand online. It is also important that you consider securing your trade mark on social media platforms such as Twitter, Facebook, Instagram and LinkedIn.

Choosing and acquiring your preferred social media handles and website URLs is important, and the earlier you register your preferred handles, the better. We recommend this is done at the same time as choosing a trade mark and securing a domain name.

Our specialist trade marks attorneys can:

• advise on the best available social media handles for your trade mark/brand
• provide advice and guidance around whether social media is right for your brand, and if so, which platforms would be the most suitable for your trade mark
• provide practical tips around managing your trade mark and brand online including advice on who should manage your social media accounts, online customer service, in-house style and interaction guides.