Registering for a Domain Name Trademark: What You Should Know

A domain name is a unique name that's associated with an IP address. Computers recognize the name and connect users to the IP address associated with the domain name. For example, "findlaw.com" is a domain name. Findlaw is the unique name and .com is the suffix, or the last part of the domain name, which is also referred to as the top level domain (TLD). There are numerous suffixes available, including:

• .org: Nonprofits
• .gov: Government agencies
• .edu: Educational institutions
• .biz: Businesses
• .travel: Travel industry
• .mil: U.S. Military
• .net: Network-related entities

To view more suffixes, visit the list of top-level domain names maintained by the Internet Corporation for Assigned Names and Numbers (ICANN).

When does a domain name qualify as a trademark?

A trademark is a name, symbol, logo, or other device used to identify and distinguish a product or service from other competitors. Not every domain name will qualify for trademark protection. The use of common or generic names will not usually meet the criteria of a trademark. Domain name trademark applies to a domain name if:

• It is distinctive or its distinction results from consumer association of the name and the Internet business; and
• The owner of the domain name was the first to use it in association with the sale of goods or services.

When trademark law protects a domain name, the owner has the right to prohibit the use of similar names or misspelled names by others.

How do I check the availability of a domain name?

Because a domain name must be unique, it is only available to one user. The availability of a domain name can be determined by searching the website of an ICANN approved online registrar of domain names. The websites InterNIC and ICANN list the approved registrars.

If a domain name is unavailable, it is easy to determine the owner. A search on a site like www.whois.net will retrieve the contact information of the owner. In some cases, it may be impossible to locate the owner when the applicant provides false information to the registrant.

If the owner is a cybersquatter, a person that registers, traffics, or uses a domain name with the intent to sell it for profit, it may be possible to still acquire the domain name when it is registered in bad faith. There are two options: sue the squatter under the Anticybersquatter Consumer Protection Act (ACPA) or have the case arbitrated by ICANN. Arbitration is far less costly than suing the cybersquatter.

How do I register a domain name trademark?

If a domain name is available and is not a protected trademark of another company engaged in a similar goods or services business, an applicant can register for the domain name. ICANN provides a list of approved registrars. The applicant will need to pay a fee, which is assessed yearly, and provide contact information. Once registered, the domain name owner has the exclusive right to use the domain address, but this right alone does not prohibit others from using the name for a business or product.

How are conflicts resolved between domain names and an existing trademark?

If a company already owns a federally registered trademark, it does not necessarily prohibit someone else from owning the domain name. There are some circumstances when a trademark owner can prohibit the use of a domain name.

• It infringes on a federally registered trademark: If another company uses a domain name that is similar to a trademark and is engaged in a business providing similar goods or services, the trademark owner may prohibit its use under trademark law. This is because the similarity between the trademark and the domain name may confuse consumers.

• It dilutes a famous trademark: If the commercial use of a domain name dilutes or tarnishes the reputation of the famous trademark, the use of the name may be terminated under trademark law.

Can a domain name trademark name be acquired for use in the future?

Yes. The basis of a federal trademark application requires that the applicant has already used the trademark in commerce or has a bona fide "intent-to-use" it. After the U.S. Patent and Trademark Office (USPTO) approves the mark, the applicant must use it within six months of the approval or request an extension. If the applicant fails to use the mark within the time limit, registration will not be granted.

Do I need to contact an intellectual property attorney?

It depends. Following best practices is a good start, but there may situations where you need the counsel of a legal professional. For instance, you may have to file suit against a cybersquatter or defend against a legal challenge. Find a trademark law attorney near you for assistance.