Trademarking Domain Names

Major businesses, from the New York Yankees to McDonalds, have recently had problems with cyber-squatting; which is the practice of registering a publicly recognized name or mark as part of an Internet domain name and ransoming it to the “owners” of the name or mark for a profit.

Cyber-squatting through the registration of domain names is illustrated by the problems encounter by McDonalds Corporation. McDonalds was upset with an author who used the name Ronald@mcdonalds.com. Ironically, the author was writing about the value of domain names. Also, sport franchises have joined together and, with the participation of CAPS (The Coalition to Advance the Protection of Sport Logos), hope to eliminate use of their trademarked logos (i.e. Yankees1.com). MTV, Volkswagen, Microsoft, and IBM are other businesses that have disputed the incorporation of their names in domain names owed by others. And as of November 1999, federal legislation was enacted to strengthen the claim of the “true owner” of the name or mark incorporated into a domain name.

The courts appear to have had little difficulty in implementing the “anti cyber-squatting” legislation when the intent of the domain name registrant has been clearly been to ransom the name or mark of another. Problems still arise, however, particularly where the registrant may also claim a legitimate business use of the name.

A domain name is an Internet address that directs users to a certain site on the Internet. There are several components to every domain name. The top level domain (“TLD”) is the name to the right of the “dot” as in “.com”, “.org”, or “.net”. The list of top level domains available for registration by U.S. users has been expanding. The component of interest in cyber squatting, however, is the second level domain name, i.e., the component existing to the left of the “dot”. Examples include the mark “MTV” in the domain name “www.MTV.com” or the mark “ebay” in the Internet address www.ebay.com.

The experience of MTV, Volkswagen, Microsoft, and IBM should be a reminder for businesses to trademark their domain name as quickly as possible. When owners of a trademarked name try to register their domain name, they are seeking to register the mark as the second level domain name. By registering the domain name, the company may possibly insure the extension of its mark into the Internet marketplace. Unfortunately, the can only be one www.holiday.com Internet address, although there can be countless businesses or services that incorporate “holiday” into their business name.

Smaller businesses who are interested in expanding or moving their business over the web, should consider registering their domain names for the same reasons, and also, to have some reference for the future that they are owners of the trademarked name. For many small businesses, trademark or copyright infringement has been the reason for lawsuits. For example, eToys, a widely known toy company, tried to halt the use of etoys.com from an art company in Europe that was doing business with the same name. But, because European company had registered the name prior to existence of the Internet business using “eToys,” the court ruled in the European art company’s favor.

At the present time, the protection of domain names over the Internet has been the center of many legal questions, mostly, on how will it be managed. The Internet Corporation for Assigned Names and Numbers (“ICANN”) and WIPO are two organizations that have acted to secure more protection over domain name disputes. In the US, successful trademarking of your domain name creates protection against infringing use, that is, a use that is likely to cause confusion in the minds of potential customers as to the source of the goods or services. It will also strengthen your claim against a cyber-squatter.

In accordance with the USPTO regulations, the requirements for trademarking a domain name are the same as any other proposed mark. The mark must be something that used to identify the source of the goods or services; if it is just an address, registration will be refused. And like any other potential mark, it cannot merely be (i) descriptive of or (ii) a generic name of the goods or services.

For more information on trademarks, visit USPTO’s website, www.uspto.com.

© Mark Alvarado, 2002