Stake out your domain name turf to protect your trademark

By Scott S. Havlick and Kristin M. Miller

Domain names serve as a directional address, identifying the address of a particular computer on the Internet. Domain names consist of two levels, each separated by a period. Top-level domains (TLDs) are identified by their Internet zone designation, such as the generic TLDs or .com, .org and .net, or by their country code, such as .de (Germany). Secondary TLDs are located to the immediate left of the dot. It is these secondary TLDs that can be registered.

The domain name system is administered by the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN has accredited more than 120 registrars from which one can or will be able to register and obtain a secondary TLD. In addition, there are approximately 240 registrars each accredited to assign country code TLDs.

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In addition to these, ICANN has adopted seven new generic TLDs: .aero, .biz, .coop, .info, .museum, .name, .pro. Of these, .biz, .info., and .name are now accepting registrations. The others are expected to be available soon.Are Domain Names Trademarks?In addition to serving as a directional address, many courts have found that domain names — the secondary TLDs — also serve a trademark function. These findings recognize that consumers have come to use domain names much as they use trademarks in the physical world to identify the desired source of a product or service and in obtaining information and making a purchase decision.What If Someone Else Gets “Your” Domain?In the United States and in most countries, the courts and the trademark laws in each country are available to trademark owners with trademark infringement claims arising from a third party’s domain name registration. However, court cases are usually costly and slow to reach final resolution.

There is an alternative to filing a court action in situations involving abusive domain registrations. Each of the ICANN accredited registrars are required to have all registrants submit to ICANN’s Uniform Dispute Resolution Policy (the UDRP). The UDRP is intended to provide a relatively speedy (three to four months) and inexpensive (usually less than $6,000) system for remedying abusive domain name registrations.

Be The First to Claim “Your” Domain

Because the domain name registration system for all TLDs is on a first-come, first-served basis, some companies have chosen to embark on ambitious domain name registration campaigns to be the first to stake out the domain name claims. The following is a list of some of the steps that should be considered in establishing a domain name registration program for your important trademarks or your company’s name. · Register all secondary TLDs involving your company name or derivatives of the name in each of the generic TLDs.

· Once the newly approved generic TLDs are available, these same secondary TLDs could be registered with those generic TLDs.

· Consider registering secondary TLDs involving your other trademarks, such as formative marks, nicknames, common misspellings of your mark or company name, and slogans with each of the generic TLDs or other newly approved generic TLDs.

· Consider additional defensive domain name registrations, such as THISCOMPANYSUCKS.COM, to avoid complaint sites that can be difficult, if not impossible, to shut down.

· Consider country code registrations.

For more information on this and other intellectual property subjects, visit www.IPH2.com.

Scott S. Havlick heads up Holland & Hart’s Intellectual Property Practices Trademark, Copyright and Domain Name Law. Kristine M. Miller is a senior associate in Holland & Hart’s Intellectual Property Group, IPH. Both practice in the firm’s Boulder office.