Screening a domain against registered trademarks
A domain that conflicts with a registered mark can be lost through a dispute procedure regardless of what was paid for it. Screening takes minutes and happens before the money moves.
Trademark rights are territorial and are granted for defined categories of goods and services. A word can therefore be registered as a mark by one company in one country for one class, and be perfectly free to use elsewhere. Screening is not a search for the word alone, it is a search for the word in the territories and classes where the domain would plausibly be used.
The registers to search
- The European Union trade mark register, held by the EU Intellectual Property Office, covers marks valid across all member states from a single registration.
- National office registers cover marks registered in one country only. The Benelux office covers the Netherlands, Belgium and Luxembourg jointly; Germany, France and the United Kingdom each maintain their own.
- The aggregated European search service run by the EU office queries national registers together with the EU register, which is the fastest way to cover the region in one pass.
- The international register under the Madrid System, searchable through the global brand database maintained by the World Intellectual Property Organization, shows marks extended into multiple countries from one filing.
- The United States federal register matters for any name aimed at an American audience, and American marks are the source of a large share of disputes.
- Company and trade registers show trading names that may carry unregistered rights, which exist in some jurisdictions even without a filing.
Search the exact string, the string with spaces, and obvious variants with the hyphen removed or a letter doubled. Registers match on the word, not on the domain, so the extension is irrelevant to the search itself.
Reading what comes back
Three attributes decide whether a hit matters.
| Attribute | What to check |
|---|---|
| Status | Registered, pending, opposed, expired or cancelled. Expired marks may still support unregistered rights if use continued |
| Classes | The goods and services classes the mark covers, under the international classification. A mark for cosmetics rarely blocks a name used for logistics |
| Territory | Whether the mark covers the market the buyer intends to serve, since rights stop at the border of the registration |
A common word registered by one company in one narrow class is a weak signal. The same word registered by several unrelated companies across many classes suggests the term is descriptive, which usually means no single party can claim it. A distinctive invented word registered anywhere is the strongest warning, since distinctiveness is exactly what makes a mark defensible.
Categories to avoid entirely
- Famous marks in any extension, including with a prefix or suffix attached, since the addition of a generic word is treated as making the name more confusing rather than less
- Deliberate misspellings of known brands, which are the clearest form of bad faith registration
- A mark combined with a term from the same industry, such as a brand plus a product category
- Names of individuals who trade under their own name, where personality and unregistered rights can both apply
- Pharmaceutical and medical brand names, which are policed continuously and centrally
- Terms protected as geographical indications, particularly in food and drink
How disputes are decided
Under the standard policy applying to generic extensions, a complainant must show three things together: that the domain is identical or confusingly similar to a mark in which they have rights, that the holder has no rights or legitimate interests in the name, and that the name was registered and is being used in bad faith. Failure on any one element ends the complaint.
The third element is where the holder's own conduct decides the outcome. Offering the name for sale to the mark owner, targeting that company in outreach, or running advertising against the term all support a bad faith finding, whatever the registration date. This is one reason the automatic advertising discussed in parking and monetisation is a poor setting for any name near a mark. Country code registries run their own dispute procedures with similar but not identical tests.
When to screen, and what to record
Screen before acquiring, not after. The cost of a clean check is minutes; the cost of losing a name in a dispute is the purchase price plus the procedure. Screen again before any outbound approach, because contacting the mark owner about a name that resembles their mark converts a passive holding into a documented approach.
Keep the search results with the acquisition record described in portfolio and renewal discipline. A dated screening record showing no conflicting mark at the time of registration is genuine evidence of good faith. Where a hit is arguable rather than clear, a professional opinion before payment is cheaper than the alternative.