Domain Names vs. Trademarks

Similar, but not equivalent

Domain names ≠ Trademarks

Domain names and trademarks are both essential components of your business identity. While they definitely bear similarities, they are not the same. It is therefore important to distinguish domain names from trademarks. In particular, one should keep in mind that registering a domain name does not establish any trademark rights, nor does trademark ownership always give you the right to own corresponding domain names.

What's the difference?

In a nutshell, domain names are unique names which refer to an IP address and which are used to access webpages all over the world. Domain names, as opposed to trademarks, are not considered an intellectual property right. Trademarks on the other hand are distinctive signs which are used to identify the commercial origin of your goods and services and to distinguish them from goods and services offered by your competitors. Trademarks also give exclusive rights to the trademark holder.

First come, first served?

As a general rule, the “first come, first served” rule applies to domain names: the first person to register a particular domain name, gets to keep it. However, the exclusive rights of trademark holders can sometimes prevail over this rule. When exactly a domain name infringes upon trademark rights will depend upon the specific extension of the domain name. For example, different rules will apply for .be, .eu or .com domain names. Generally speaking, however, the following conditions apply:

1. The domain name is closely similar to an older trademark;

2. The domain name holder cannot prove any rights or legitimate interest; and

3. The registration and/or use of the domain name occur in bad faith.

Alternative Dispute Resolution (ADR)

A big advantage of domain name disputes is that it is often possible to use alternative dispute resolution (ADR) methods instead of having to take the dispute to court. This is generally much cheaper and less time-consuming. For .be domain names, CEPANI is the competent authority for this. Some notable domain names which have been deleted or transferred following a decision by CEPANI include disney-store.be, privatebanking-belfius.be and bitcoinbelfius.be, as well as instagram.be and huawei.be.

How to protect both?

In summary, trademarks and domain names are not substitutes for each other. Businesses should therefore always ensure that both their trademarks and domain names are optimally protected.