From the Nolo eCommerce Center
Get answers to your questions about domain names and trademarks, and how the two can conflict.
- When does an Internet domain name qualify as a trademark or service mark?
- How can I find out whether a trademark I want to use as a domain name is already being used?
- What happens if there is a conflict between an Internet domain name and an existing trademark?
- Can a business trademark a domain name for future use?
A domain name, such as nolo.com, can qualify as a trademark or service mark when it is used in connection with a website that offers goods or services to the public. This includes all sites conducting e-commerce and sites such as Yahoo.com that provide Web-related services.
However, only some types of commercial domain names qualify for trademark protection. For instance, while domain names that use common or descriptive terms, such as healthanswers.com or stampfinders.com, may work very well to bring users to a website, they usually do not qualify for much trademark protection. This means that owners of such domain names won’t have much luck stopping the use of these words and phrases in other domain names. In other words, by using common terms in a domain name, the owner of the name will have less protection against the users of similar domain names than she would if her domain name was distinctive.
Because so much business is now being done online, most people will want to be able to use their proposed trademark as a domain name so that their customers can easily locate them on the Web.
The best way to find out whether your trademark is available as a domain name is to use the search engine at www.networksolutions.com. Simply type the name you want to use in the “Register a Web Address” box. Select a top-level domain to the right of the box (which will be.com for most users) and click “Go!” If the name is not available, you’ll receive a “Selection Not Available” message.
If the name is available, you’ll receive a “Congratulations” message. You can then click “Continue” to reserve or register the name. Registration costs a minimum of $70 for a two-year period. Reserving a domain name costs an additional $49 for a total of $119.
To establish a website, the owner must first register the site name with a domain name registry, such as www.networksolutions.com. As a general rule, you can register any domain name that isn’t already registered, without regard to whether the name is in fact a trademark owned by a different company. This has led to a number of instances where companies with famous marks have initially not been able to use these marks because someone had already used the name to identify another site.
Courts have generally sided with the trademark owners in these disputes and ordered the domain name user to stop using the offending name, even when no goods or services were being offered on the website.
It is possible to acquire ownership of a trademark by filing an “intent-to-use” (ITU) trademark registration application with the U.S. Patent and Trademark Office before someone else has actually started using the mark. The filing date of this application will be considered the date of first use of the mark if the applicant actually uses the mark within the required time limits – six months to three years after the USPTO approves the mark – depending on whether the applicant seeks and pays for extensions of time.