Obtaining and Protecting Domain Names

How do I obtain and protect a domain name?

A critical consideration at the time of selecting a domain name is to choose a name that is memorable and stands the best chance of being available. For many registrants, this is their company name or the name of a leading product or service.

The next step is to determine whether the proposed domain name is available or taken. You can preliminarily determine this by searching on the website www.allwhois.com. You can also go directly to the sites of accredited domain registrars to inquire on-line whether a given domain name is available. Refer to www.internic.net for a complete listing if accredited registrars. If your desired domain name is available, then you will be guided through the process of selecting and paying to reserve the name.

A typical Internet domain name, http://www.yourcompanyname.com, is comprised of both the secondary level domain (SLD) i.e. “yourcompanyname”, and a top level domain (TLD) i.e. “.com”. The ".com" TLD was originally established for commercial users, the ".org" TLD for non-profits, and the ".net" TLD for network service providers, although these TLDs are not restricted to such uses and are used by many types of organizations and individuals. Other unrestricted TLDs are ".info, ".tv", ".biz", and ".us", with more under consideration. Restricted or sponsored TLDs include .edu (reserved for educational institutions), .gov (reserved for government), .mil for (reserved for military), .museum, (reserved for museums) .aero (reserved for members of the aviation community) and .coop (reserved for cooperatives). A “Sponsored” TLDs refers to those TLDs that have a sponsor that represents the particular community that is most affected by the particular TLD. For more detailed information about TLDs, refer to www.icann.org/faq.

Because the ".com" TLD is the most popular with commercial enterprises, it is the difficult TLD to match with a chosen SLD. Some domain registrars will automatically recommend that you choose another TLD if your desired name is taken with the ".com" TLD. Even if there are no legal restrictions on using them, alternate TLD's could be confusing or inappropriate for your market sector.

If you determine that you must have a certain domain name which is already registered to a third party, you can find out who it is registered to through www.allwhois.com. Here, you can find out the name and address of the registrant and when its registration expires. If you find out that domain name you want will expire soon, you can wait and see if the registration is renewed. Registrars usually delete the domain registration, after a notice and a grace period, but there is no uniform policy for handling expired domain names. In any event, it is likely that the registrant will renew its domain name, especially if is in use or has a potentially high resale value.

Once you know who the registrant is, you can make contact, directly or through a domain broker, detective agency or other operative, if you wish to remain anonymous, and make an offer to purchase the domain name. If you believe that a domain registrant has copied your trademark and has not obtained that domain for legitimate business purposes, you may have a remedy under the Anti-Cyberquatting Consumer Protection Act (see discussion under "Can I stop others from using my domain name?" below.)

Another important consideration is the term of the registration you procure for the domain name. Domain names can be registered for any number of years, in one-year increments, and for a maximum of ten years at any given time. It is up to each registrar to determine the length of term it offers registrants. One major registrar offers a service that it will continue to renew your domain automatically, for a period of 100 years.

Can I protect a domain name by registering it as a trademark?

A mark comprised of a domain name may be registered as a trademark or service mark in the U.S. Patent and Trademark Office. However, just like any other mark, the domain name is registrable only if it functions to identify the particular source of goods or services offered. In other words, it must be distinctive so as to be capable of distinguishing your goods or services from those of others.

If the root of the proposed domain name would not be entitled to trademark registration because, for example, it is descriptive such as the term "shoes" as the name of a shoe store, and not sufficiently arbitrary, or suggestive to merit trademark protection, then merely adding a top level domain (TLD) designation, such as ".com", does not alleviate the deficiency. This rule is consistent with well -established trademark law, holding that adding suffixes such as “Corp”, “Inc.” or “Co.” to a generic or descriptive term does not add any trademark significance and is, therefore, not to be considered part of a mark. This produces the counter-intuitive result that some of the most desirable domain names will not necessarily be registrable as marks prior to extensive use, or at all.

Another caution about trademark regulation, at least in the United States Patent and Trademark Office (the "PTO") , is that it requires that the mark be in use in interstate commerce as a trademark or service mark in connection with the particular goods and services claimed in the application. While you can initially apply for registration on the basis of your "intent-to-use" a mark, the registration will not issue until you submit appropriate evidence of use to the PTO. Use of the mark merely as a corporate name or internet web address does not usually qualify as using a mark in interstate commerce for trademark purposes.

Can I stop others from using a similar domain name?

If a third party starts using a domain name that infringes your established trademark or service mark, you might have a remedy under the Anticybersquatting Consumer Protection Act. This law may also help protect you against a so-called “typo squatter”, a person who sets up a website under a deliberate misspelling of your trademark, to lure web surfers to their site instead. Reverend Jerry Falwell’s trademarks were found to be infringed by the web site "www.fallwell.com", a site that deliberately misspelled his last name and directed consumers to an on-line bookstore where they could purchase a book critical of his politics. Note, however, that "gripe sites" (a/k/a “sucks-sites”), are often found to be protected by the First Amendment, where there is no intent to profit from the site.

Obtaining recourse under the Anti-Cybersquatting Consumer Protection Act involves the commencement of a lawsuit against the holder of the allegedly infringing domain. Sometimes it is hard to locate the owner, even though address information is required by domain name registrants. Lawsuits brought under the ACPA often result in settlements where the domain name is purchased from the alleged infringer.

Conflicts between domain name holders and the owners of registered trademarks can also be addressed through the Uniform Dispute Resolution Policy of ICANN, the Internet Corporation for Assigned Names and Numbers. See www.icann.org for more information on the dispute resolution policy, and see the further discussion of the ICANN Uniform Dispute Resolution Policy under “PROTECTING YOUR CONTENT AND YOUR BRANDS” here.

Should I reserve other domain names?

Because of the prospect of typo-squatters and other forms of piracy, you might consider registering additional forms of your domain names, even if you are not planning to use them. For example, if you obtained your domain name in the TLD ".com, "you could register the same domain name under the ".net" or ".biz" TLDs. You could also attempt to register variants of the SLD that consist of logical misspellings or a plural form.