Updated: October 28, 2021
Your domain name may be an essential part of your brand. Among the millions of domain names out there, it can be difficult to establish your web address as part of your business identity. In simplest terms, a domain name is your website name and the unique address where Internet users can access your website. This web address may be the same as your company name, or it may not be. Either way, you may be looking for ways to protect your domain name as part of your brand—and trademarking your Internet domain is one way of doing so.
Protecting your domain name as a trademark
A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of the goods or services of one party from those of others. Using the trademark in commerce gives you default rights under federal and state law, but companies and business owners often seek to register their trademarks with the United States Patent and Trademark Office (“USPTO”). More on this below.
The benefit of using trademark law to protect your domain name is that you can potentially protect against the unauthorized use of similar web addresses which are being used in connection with goods or services similar to yours, and in a manner that is likely to cause confusion with your business. In other words, if someone is using a domain name that is similar to yours and the similarity would likely cause confusion, you may be able to sue for infringement or pursue a remedy under the Anti-Cybersquatting Consumer Protection Act (“ACCPA”).
Difficulties in obtaining trademark law protection
A domain name cannot be protected as a trademark merely because it is your address on the Internet. In addition to using the name in commerce, it must be used in a way that distinguishes your goods or services from those of others. Distinctiveness is key. Trademarks can be inherently distinctive if they are famous, arbitrary, suggestive, fanciful, or names coined for the specific purpose of being trademarked (that otherwise lack meaning). The root of the domain name (i.e., the web address without the www. or .com) should be unique. Names that use surnames, geographic areas or common “descriptive” terms are generally not trademarkable. Books.com or California.com, for example, would likely not receive trademark protection. However, there have been limited instances where certain descriptive terms, when combined with the .com top-level domain, changed the generic nature of the combination and, thus, became eligible for trademark protection.
The most famous example of this is Booking.com. After the USPTO initially denied Booking’s registration of its domain name based on the premise that the addition of “.com” to a generic word did not render it distinctive, the U.S. Supreme court reversed the denial and found that the famous online travel agency had a protectable trademark. The Court explained that whether BOOKING.com is generic “turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services.” Since at the lower court Booking amply demonstrated that consumers perceived the term as a brand name—as opposed to a generic online hotel-reservation service—the U.S. Supreme Court awarded trademark protection.
Domain names are registered with registrars—services that can register new domain names and in many cases host applicants’ websites for a fee (for example, GoDaddy.com, Network Solutions, Bluehost or Domain.com). Registering a domain typically means signing a contract with a registrar that describes the terms under which the registrar will manage that domain name (or host the website). Reputable registrars are registered with an organization called ICANN, which in broad terms manages the internet’s domain names and IP addresses. Registering a domain with an ICANN-accredited registrar does not automatically give you trademark rights. It is, however, another way to show the public and the USPTO that your domain name is distinctive and used to identify your particular goods or services. Registering with ICANN also makes all domain holders to the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”), an additional enforcement mechanism against potential infringers, detailed below.
Federal registration of your trademark
Trademarks are not required to be registered; however, federal registration of a trademark with USPTO has several benefits. A federal trademark registration gives you additional legal protections, such as a legal presumption of ownership nationwide, the exclusive right to use the mark on or in connection with the goods or services set forth in the registration, and the ability to bring an action concerning the mark in federal court. Also, registration puts the public on notice of your claim of ownership of the mark and that the mark represents your brand.
In addition, if your business continues to use its federally registered trademark in commerce for a period of five years after it has been registered, your business may also be permitted to file for “incontestable” status of the mark, which provides additional advantages should your company become engaged in a trademark dispute.
Managing domain name disputes
Having a federally registered trademark opens up different avenues for enforcing your rights in your domain name against infringers. For example, by registering a domain, all domain holders will be subject to ICANN’s dispute resolution policy, the UDRP. Domain holders, as discussed above, can also bring suit under the ACPA. Claims under the UDRP or the ACPA both have their benefits and drawbacks, but each is appropriate under similar circumstances.
Filing a UDRP Complaint
Filing a complaint under ICANN’s UDRP can be invoked either by filing suit in court or submitting a complaint to an ICANN-approved dispute resolution service provider, such as the National Arbitration Forum. Complainants must demonstrate that: (i) their domain name is identical or confusingly similar to the complainant’s registered trademark; (ii) the alleged infringer has no rights or interests in the challenged domain name; and (iii) their domain has been registered and is being used in bad faith.
The UDRP identifies several factors to determine if an alleged infringer is acting in bad faith, including whether the alleged infringer registered the domain to prevent the trademark owner from reflecting that mark in a corresponding domain name (if the infringer has engaged in a demonstrable pattern of that conduct), or whether the alleged infringer registered the domain solely for the purpose of disrupting a competitor’s business.
To defend against a UDRP complaint, the alleged infringer must show: (i) use of the domain in connection with bona fide offerings of goods or services; (ii) that the alleged infringer has been commonly known by the domain name (even if they have no trademark); or (iii) that the alleged infringer has made legitimate noncommercial or fair use of the domain, without intent to either divert complainant’s customers or tarnish complainant’s trademark.
If a Complainant successfully demonstrates these elements at an approved dispute resolution service, they can bring the result back to ICANN, who will either cancel the offending domain name or transfer it to the domain holder. Arbitration under the UDRP tends to be cheaper and resolve more quickly than a lawsuit, but note that these proceedings cannot result in money damages.
Filing Suit under the ACPA
The elements a plaintiff must demonstrate for a successful ACPA claim are similar to those required under ICANN’s UDRP. To successfully sue a defendant for cybersquatting, a trademark owner must prove: (i) the defendant’s bad faith intent to profit from the use of the trademark; (ii) distinctiveness of the trademark at the time of its registration; (iii) the challenged domain’s being identical or confusingly similar to the trademark; and (iv) the trademark qualifying for protection under federal trademark laws.
Trademarks do not need to be federally registered to bring an ACPA claim, but a registered trademark will be presumed distinctive and, therefore, satisfy an element of the claim. Courts additionally look to nine non-exclusive factors to determine a cybersquatter’s actions being in bad faith.
Successful cases brought under the ACPA will result in the transfer of the offending domain back to the domain holder. A suit under the ACPA might be a longer and more costly process than a UDRP arbitration, but can also result in monetary damages. In the case of a plaintiff being a registered trademark holder, the plaintiff may also be entitled to statutory money damages of up to $100,000 per act of cybersquatting, as well as attorney’s fees.
More detail on what is required to bring a successful ACPA claim can be found here.
CONSULT AN EXPERIENCED TRADEMARK ATTORNEY
Domain names are an essential part of a business’s brand and may benefit from the extra protection of trademark registration. However, these laws are complex, and many marks are rejected for registration with the USPTO. Enforcing marks can be a difficult and technical process as well. Engaging qualified legal counsel can guide you in your trademark application, provide advice regarding other ways to protect your brand, and help enforce your domain against infringers should it be necessary.