Trademarks and domain names

A registrar checks exactly one thing before taking a registration: whether the name is free in the registry. It does not check company registers, charity registers, trademark databases or the sign above the shop at the end of the road. That is not negligence, it is the design: registration is a first come, first served allocation of an entry in a database, described in what a domain actually is, and it makes no statement about the right to use the words it contains.

A trademark register works on entirely different principles. It records a sign, registered for particular categories of goods and services, in a particular territory, with a priority date. Rights are bounded by all three of those things. The same word can be registered by different proprietors in different classes and different countries without anyone infringing anything.

Where the two systems actually collide

Collisions need an overlap. A choir sharing a name with an industrial adhesive is not a problem, because nobody encountering one would take it for the other. A village foundation sharing a name with a national charity operating in the same field and the same country is a problem, and it is a problem whether or not a domain is involved. The domain is simply the place where the collision becomes visible and public.

Practically, three questions decide the risk. Does the other holder operate in the same sector, does it operate in the same territory, and would an ordinary person seeing both be likely to confuse them. Where all three point the same way, the name should be reconsidered before anything is committed to print. Where they do not, an identical string is often entirely survivable.

Registering the domain clears nothing

The most expensive misunderstanding in this area is the belief that holding the domain settles the question. It does not. A registration can be challenged through the dispute procedure described in the UDRP explained, and separately through the ordinary legal system in any jurisdiction where the mark holder has rights. Conversely, holding a trademark does not entitle the proprietor to any particular domain: the mark holder who arrives late finds the name registered to somebody with an equally good claim, and no register hands it over automatically.

The checks worth running

None of the following requires a lawyer, and all of them are worth an evening before a name is adopted.

• Search the national trademark register of the country where the group operates, and the relevant regional register covering it, for the exact words and for obvious variants.
• Search the company and charity registers for organisations already trading under the name.
• Search the web plainly, including in the singular and plural, and look for anyone using the name in the same field.
• Check the other common extensions of the same name, since an active site on the .com version of a chosen .org name is a warning worth heeding.

If those searches turn up something in a different sector or a different country, the finding is usually noted and set aside. If they turn up something in the same field, the sensible response is to choose differently, which is easier before the name has appeared on shirts and letterheads. The considerations behind a durable choice are set out in naming for clubs and associations.

Descriptive names and common words

Groups often choose the plainest possible description of what they do, which has two consequences. Plain descriptive words are hard to protect, so the risk of infringing anybody is low, and the risk of being confused with a dozen similarly named groups is high. Names built from ordinary geographic and descriptive terms tend to be safe and unremarkable, and the distinctiveness has to come from the group's own reputation rather than from the words.

The opposite choice, an invented or unusual word, is more defensible and easier to protect if the group ever wants a registration of its own.

Registering a mark of the group's own

Most clubs never need to, and should not be talked into it. A registration is worth considering where the name has real value beyond the membership: a festival that licenses its name, a charity whose fundraising depends on a recognised brand, a body whose accreditation others rely on. In those cases a registration in the relevant classes and territory makes the name defensible, and it is also what makes a dispute complaint viable later, since a complaint requires demonstrable rights in a mark.

A domain registration is an address. A trademark is a right. Confusing the two costs organisations more than any other misunderstanding in this subject.

If a letter arrives

Correspondence asserting trademark rights should be read carefully and answered slowly. Some such letters are well founded, many are broader than the rights behind them, and a few are sent speculatively. The relevant questions are what mark is being asserted, in which classes and territory, from what date, and whether the group's use actually falls within that scope. A reply that engages with those specifics is far more useful than either capitulation or silence, and where the mark genuinely overlaps, changing name early is cheaper than defending a position that will not hold.