• When considering various possibilities for a new brand, conduct a basic domain name search first and if available secure key extensions e.g. .com for those variations.
• Maintain an online artwork library for your brand. Keep it updated as iterations change. This can be invaluable for a service provider such as Lexsynergy when attempting online enforcement.
• I can not emphasise enough the benefits of a centralised domain portfolio with a single provider from an enforcement perspective.
• Come up with a domain policy document. For example, are commercial partners/affiliates allowed to register your brand in domain names? This may need to be addressed in contracts.
• Do seek to register your brand as a trade mark in key jurisdictions (not just where you intend to trade but also in key infringement territories.) Do register the brand as both a word mark and also as a figurative logo mark (if appropriate).
It is a common misconception that you can trade mark an idea. A trade mark is essentially a badge of origin i.e. a way of identifying that your goods and services come from you as opposed to another party. It is crucial to seek some form of registered trade mark protection. If a brand owner does not, then it can become extremely expensive and time consuming to tackle an infringement without some form of registered protection.
• Read a lot. The online world is ever changing!
• Focus on level of detail. An unfettered curiosity to solve problems is invaluable.
• Be prepared to work long hours!
Working ultimately on behalf of a well-known Premier League footballer to recover a domain name. It was a high-profile case from a few years ago and it combined my love of sport with my interest in Intellectual Property.
Usually, we work on behalf of brand owners to recover conflicting domain names. There was one case, where the brand protection team on behalf of the other side, i.e. on behalf of an individual to help defend them against a multi-national brand owner. I am pleased to say that the matter was settled.
If a brand owner attempts to enforce their brand online without having sought to seek registered trade mark protection for their brand! It is not impossible, but makes it extremely difficult and potentially costly!
.com remains king in my view!
For example, if you do not own the .com domain, what does that say about your brand? Brand owners still spend a fortune conducting trade mark clearance searches for their brand, but forget to conduct corresponding domain availability checks which could be “show stoppers”!
1. Family / Partner
2. Ballroom Dancing
5. Good Health!!!!