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Which Domain Extension to Choose When Registering a Trademark

Companies often register websites (domain names) together with their trademark. In this article, EXIP lawyers share advice on which extensions are better to choose and why.

Website domain names are, in essence, trade names (trademarks) under which their owners sell goods or provide services.

As a rule, most owners prefer domain names with global extensions such as “com” and “org”, but do not consider extending protection of their trademark to more than one country.

This can be risky, because ICANN, the Internet Corporation for Assigned Names and Numbers, registers any free name, and this registration is made at the applicant’s own responsibility. In other words, the company fully disclaims liability in the event of disputes over domain names.

Disputes over the unlawful use of domain names are handled by the WIPO Arbitration and Mediation Center of the World Intellectual Property Organization. In terms of time and money, this is an effective out-of-court mechanism for settling domain name disputes.

EXIP’s experience

For example, last year, by turning to the above-mentioned Center, EXIP lawyers minimized our client’s losses related to the infringement of rights to a domain name that differed from a trademark protected in the European Union by just one letter. We recommend that our clients be very careful when choosing a domain name and use global extensions only if the trademark is registered in most of the world, that is, if it has international status.

This problem is especially common for startup projects, which save significantly in the early stages of their development. Novice entrepreneurs do not check whether a domain name is similar to previously registered international trademarks, but buy domains with global extensions anyway. In such cases, losses can amount to USD 50,000 to 100,000 and bury the project at its initial stage.
Also read about trademark registration and copyright on the internet.