How to protect your Web site's name: in's and out's of Internet domain names

Folio: The Magazine for Magazine Management, Jan, 1998 by Jessica R. Friedman

Like many of your fellow publishers, you've decided to create a World Wide Web page. The consultant you've hired to set up and operate your servers tells you that you need to register a "domain name." You have a few questions: What is a domain name? Is it the same as a trademark? What does registration involve? What benefits does it confer?

A domain name is your Internet address. Without it, no one will be able to access your Internet site. It consists primarily of two levels: an abbreviation that indicates the nature of your organization (".com" for commercial), and a singular identifier, or second-level domain name, that may consist of up to 22 characters, for a total of 26 characters.

You may register any name that fulfills these criteria, as long as no one else has already registered it. To find out if your proposed name is available, you can search http://rs.internic.net/cgi-bin/whois.

A domain name differs from a trademark in that, while different people can register the same name as a trademark for different goods and services (American," for example, is used for a wide variety of goods and services), there can be only one "xyz.com." InterNIC, the organization that runs the domain-name registry, operates on a first-come, firstserved basis. It does not conduct searches for all potentially conflicting marks, the way the United States Patent and Trademark Office does when you file a trademark application. As a result, many companies seeking to register their names or the names of their products have discovered that those names have already been registered by people not associated with them, including competitors. Moreover, some companies have discovered that their names are being used for sites with which they do not want to be associated. Hasbro, the maker of the famous "Candy Land" board game, for example, discovered that the name "candyland.com" was being used for an Internet pornography site.

Resolving disputes

What if this happens to you? If you obtain a court order to the effect that the domain name "rightfully belongs" to you, InterNIC will revoke the other registration. The most obvious way to obtain such an order is to sue the registrant for trademark infringement, on the ground that people are likely to think that the registrant's site is run or endorsed by your publication or company. Even if consumer confusion is unlikely, you may still be able to obtain a court order under a 1996 federal law that provides that if your mark is "famous," whether or not you have a federal registration, no one else may use a similar mark in a way that "dilutes" the value of your mark. Hasbro relied on this statute to obtain a preliminary injunction against the use of the "candyland.com" name, as no one was likely to think that Hasbro had anything to do with that Web site.

What if you don't want to spend thousands of dollars on a lawsuit? Under InterNIC's dispute policy, if you present InterNIC with a certified copy of a valid federal or foreign trademark registration for the name at issue, and the registration date or the date of the first use stated in that registration precedes the date on which the registrant first activated its domain name, InterNIC will give the registrant 30 days to produce its own federal or foreign registration for the name, which must have been obtained before InterNIC asked for it. (Before you contact InterNIC, you must notify the registrant in writing that the registrant's domain name infringes your rights, and you must give InterNIC a copy of that notice along with your registration.)

If the registrant produces such a registration, the registrant may continue to use the disputed domain name unless and until you obtain a court order in your favor. If the registrant can't produce such a registration, InterNIC will help the registrant pick a new domain name. If the registrant refuses to accept a new domain name or does nothing, InterNIC will place the disputed domain name on hold, where it can languish indefinitely if neither party pursues the right to use it.

This is a brief summary of a long, detailed policy, certain aspects of which appear to conflict with trademark law principles. For example, when InterNIC reviews a challenger's registration, it does not have to (and apparently does not) consider the relationship between the challenger's goods and those Of the domain-name registrant. This means you might have to relinquish your domain name to someone whose business has nothing to do with magazine publishing.

To mitigate against this result, it is very helpful to have a trademark or service mark registration for your second-level domain name before you register with InterNIC. (You should have a trademark attorney do a full trademark search and a Web search before registering any domain name to avoid infringement and dilution claims.)

You can also protect yourself by registering the domain name itself, complete with a ".com" (although that suffix itself is generic) as a service mark, if you are actually offering or planning to offer services -- such as online magazine services -- at your Internet site. (Just advertising your product does not constitute providing "services.")