The Law of Domain Names

DEFINITION OF A "DOMAIN NAME" AND ITS IMPORTANCE TO YOUR BUSINESS
HOW DO I AVOID LITIGATION REGARDING MY CHOICE OF A "DOMAIN NAME"?

Definition

A "domain name" is an Internet address. What "1600 Pennsylvania Avenue" is to the mail and 1-800-CALL-ATT is to the telephone is what a domain name like "whitehouse.gov" is to the Internet. It's important to your business because it's the commonly used Internet identification for your business. This is an area where the cyber-savvy have an important secret and they're using it to their advantage.

Be aware that the domain name system is largely a first-come, first-served system. If you want your cyberspace name to reflect your real world name, you need to secure your domain name immediately. Often legitimate disputes and disappointments can arise because each domain name must be unique. For example, I wanted the domain name "grossman.com". When I checked, I learned that somebody had already claimed it. My second choice was "grossmanlaw.com" (a better choice because it identifies my vocation). That also was taken so I settled for "mgrossmanlaw.com".

Several well-known companies have learned this lesson the hard way. In a famous case, a journalist wrote an article saying that many well-known companies had not yet registered their recognizable trademarks as domain names. To make a point, he registered "mcdonalds.com". "Ronald" was not happy to find out that his mail was going to this journalist. After flirting with our legal system, McDonalds agreed to make a $ 3,500 donation to an elementary school in exchange for the domain name.

Sometimes these disputes are not good-natured or even in good faith. Take Sprint temporarily grabbing "mci.com" or a disc jockey registering "mtv.com". Another famous episode involved Princeton Review, a test preparation business (i.e. for SATs and MCATs), registering the domain name "Kaplan.com". Stanley Kaplan is its archrival in the test preparation business. Princeton Review's settlement proposal was a case of beer for the domain name. Kaplan chose binding arbitration for a trademark infringement claim.

Obtaining a Domain Name

In the United States, domain names are registered with a company called Network Solutions, Inc. (NSI). As a practical matter, the easiest way to get a domain name is to allow your Internet service provider to register it with NSI for you. They generally charge a fee of $50-100 above NSI's $100 fee. Your initial registration is valid for two years and is renewable for $50 per year afterwards.

Trademark Issues

Be aware that just because NSI gives you a requested domain name does not resolve any possible trademark issues. Trademark law predates domain names by centuries. Creaky old trademark law may allow two companies to coexist with the same name if, for example, their service areas are geographically distant or they provide goods or services that don't compete. An important factor is the "likelihood of confusion".

Among the problems is that geographic distance is irrelevant with domain names. And you don't even have to register a trademark to have one. Trademark rights arise from use of the mark in business not its registration. So trademark law can accommodate Domino's Pizza and Domino Sugar, but the Internet can only have one "domino.com".

We are straining trademark law to its limit trying to accommodate domain names that have a worldwide significance within a system that takes into account geography and other factors that don't apply to the Internet.

While this is all getting sorted out in the courts and the government, you can take some practical steps to protect your company. Before registering a domain name, you should conduct a trademark search. Many trademark search companies are selling their services via the Web. If there is any possibility of a dispute between your proposed domain name and someone else's trademark, you should consult with an attorney. A trademark search is important even if you already have a registered trademark in your proposed domain name. This is because your use of your trademark on the Internet could conceivably provoke a dispute.

Remember, the notion of geographic distance is irrelevant to a domain name system that operates on a global basis. So do your trademark search and register your domain name. Do it now before you lose your opportunity!