The real world and the Internet have long been segregated. Today however, these two worlds tend to overlap and as paradoxical as this may sound, registering your trademark can prove to be quite a useful protection on the Internet.
The reasons for the importance of trademark registration are increasing with the rise of cybersquatting. This has led to registered trademark owners enjoying new benefits in relation to the protection of their rights over the Internet.
Firstly, it has become increasingly important to protect trademarks on social networking sites. Since 2009, Facebook allows its members to create user names which are easily accessible and which can include trademarks. Before 2009, Facebook allowed a short period of time for registered trademark owners to identify their trademarks and to prevent their use by other members.
Secondly, all trademarks on the Internet must be protected on search engines and particularly in sponsored links. Through its AdWords system, Google allows advertisers to select keywords so that their advertisements become visible to web surfers when they enter these words in the search engine. Conflicts arise when advertisers buy keywords containing trademarks whilst having no rights to them.
Holding trademark rights thus becomes an important factor in countering unfair competition practices.
Thirdly, trademark owners must also pay attention to the increasing number of new domain name extensions gTLDs. To date, more than 300 new gTLDs have been delegated, and hundreds more are soon to follow. In view of the potential conflicts with protected trademarks, a new mechanism has been made available to trademark owners: the Trademark Clearinghouse. It is a centralized database for all registered trademarks. Once the trademark is registered there, trademark owners can participate in the Sunrise Periods for newly-launched gTLDs and are informed when third parties register domain names that are identical or similar to their trademark. The person filing for the domain name in question is also informed that he may be infringing on the rights of a trademark owner.
Finally, if a domain name identical to or containing a trademark is registered, specific administrative procedures such as the Uniform Rapid Suspension (URS) and the Uniform Domain Resolution Policy (UDRP) can assist trademark owners in taking action against cybersquatters. These specific procedures are only accessible to trademark owners.
Thus, being a trademark owner is now almost a requirement to protect and defend your rights on the Internet, even if your company does not have a strong Internet presence.
Dreyfus is specialized in the protection of rights over the Internet. Please do not hesitate to contact us for any information.