Establishing a Presence In Cyberspace

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By Gerald M. Levine

Entrepreneurs whose businesses depend on their Internet presence should ensure they own domain names corresponding to their trademarks, and vice versa. While functionally different, in today’s cyber marketplace, domain names and trademarks should not be thought of separately. Each are critical components of your company’s infrastructure and brand that offer valuable intellectual property rights.

Effective domain names are critical components of a business’s success. They are easy and inexpensive to acquire. It takes minutes to register them and not much longer to establish a presence in cyberspace. However, the reality of acquiring the most desired domain name is complicated because it is already registered by somebody else.

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The Market for Domain Names

The reality is that Internet entrepreneurs have registered every word in the dictionary, many with appropriate qualifying adjectives and adverbs, as well as every conceivable two- to four- character string serviceable as acronyms for the names of the new businesses. They are virtual supermarkets of domain names. As a result, premium domain name choices have become costly to acquire.

Much to the irritation of newly emerging businesses there is nothing unlawful in acquiring, holding in inventory, and selling domain names on the secondary market or owning domain names corresponding to trademarks if the domain names were acquired prior to the existence of the trademarks. Luckily, while these Internet entrepreneurs have registered enormous numbers of the more obvious character strings, there remains a vast pool of possibilities for names that they have not imagined. This can include combinations of words that no one has ever thought to use.

Furthermore, for entrepreneurs disappointed that their first choices are unavailable, the Internet Corporation for Assigned Names and Numbers (ICANN) opened up fresh possibilities for enlarging space in the cyberphere by authorizing new top level domains that began coming onto the market in 2014 so that entrepreneurs are no longer limited to legacy gtlds (.com, .net, .org, etc.)  These new gtlds include generic words, industries, professions, activities, hobbies, sports, goods, services, cities, and countries.

Choosing a Domain Name Registrable as a Trademark

Entrepreneurs should ensure that domain named they wish to use are also registrable as trademarks. For example, descriptive terms, unless they can also be seen as suggestive, are likely to be rejected by the USPTO. As a general rule, descriptive terms are registrable if the business already has a presence in the marketplace and has acquired distinctiveness sufficient to pass the test for registrability. Otherwise the Examining Attorney at the USPTO is likely to suggest registration on the Supplemental Register. To be avoided are dictionary words that essentially describe the goods or services being offered because they are not registrable; neither are personal names or geographical designations registrable.

Finally, when appropriate names are imagined they should be checked on both the Whois Directory as well as the USPTO database for pending and registered trademarks. And, if the names are available they should be discussed with a trademark attorney to confirm they are registrable as trademarks, and, if they appear to be available, whether there should be a further search of unregistered trademarks.

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A Trademark is Not Enough

But registering a trademark without checking to see if the desirable domain name is available is a common mistake made by entrepreneurs. The problem is exacerbated by a misunderstanding of the claim process under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). Having a registered trademark rarely gives you the right to the domain name of that mark because the right to a domain name belongs to the first to register the name, and not to the trademark owner. Therefore, to avoid having to incur the costs of purchasing a domain name for your trademark from one of the supermarkets, it is best practice to decide on domain names first before spending money on trademarks.

However, if you already have a trademark and discover that someone else has registered a domain name after your entry into the market you have remedies for cybersquatting in two forums. Cybersquatting is defined as registering, trafficking in, or using a domain name with the bad faith intent to ultimately sell the domain to a party who owns a trademark found within the name for an inflated price. You can either allege a claim under ICANN’s UDRP which is a relatively inexpensive and quick process; or, file a trademark infringement claim in federal court under the Anticybersquatting Consumer Protection Act. While both avenues may provide an opportunity to gain possession of infringing domain names, the federal action can be a lengthy and expensive process.

If you have questions about whether your domain name is registrable, or have discovered someone cybersquatting on your online property, connect with a Priori lawyer today to best protect your business’s brand.

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