By UpCounsel Technology Attorney Ashkaan Hassan

Choosing a domain name would seem to be a natural process for a new business venture or personal website. You just come up with a clever name, check to see if it is registered with the Internet Corporation for Assigned Names and Numbers (ICANN), the nonprofit organization responsible for maintaining the master registry of domain names, register it with an ICANN-accredited registrar, and you are off and running!

However, with domain names, things are not quite as easy as that. There are a number of legal issues to consider in connection with choosing a domain name. Even if you think that you have an excellent idea for a domain name that is still available and will be accessible to market, your choice of a domain name could prove to be difficult to defend from a legal perspective.

The following are some of the most common legal issues to consider or which may arise when it comes to acquiring a domain name. These issues need to guide your thinking when considering and ultimately deciding upon a domain name, whether the domain name is available for purchase and registration or not.

Avoid Trademark Infringement

One of the most significant legal risks associated with choosing a domain name is trademark infringement. Even if the domain name is still available for purchase and registration, it may already be trademarked. For instance, if you register a domain name that already has been trademarked but has yet to be purchased and registered, you could be at risk of losing your chosen domain name if the trademark owner files a lawsuit and convinces a judge or arbitrator that your use of the domain name makes it likely that customers would be confused as to the source or quality of its products or services.

An easy solution to this potential dilemma is to verify whether the domain name you are considering is trademarked before purchasing and registering the domain name. The trademark database maintained by the U.S. Patent and Trademark Office should be your first stop in this process. Searching this database will give you information regarding all registered trademarks and all trademarks for which registration is pending. You should search not only for your proposed mark but also for other marks that are logically close, such as synonyms and variant spellings.

When American trademark law protects a domain name, the trademark owner also has the right to challenge the use of similar names or misspelled names by others. In one famous arbitration decision, an individual in Bangladesh attempted to register the domain name “bestshopvac.net” and the well-known vacuum cleaner manufacturer, Shop-Vac Corporation, filed an arbitration proceeding against the individual, who was using the Shop-Vac trademark without permission to sell vacuum cleaners on Amazon as well as through his website. In that arbitration decision, the individual was permitted to keep using the domain name because the arbitrator found that it was not protected by trademark because the term “vac” was commonly used for “vacuum.” Although the registrant was able to keep the domain in this case, he had to hire an attorney and fight in court to protect the name.

What if Someone Has Already Registered the Domain Name I Want?

Cases of cybersquatting often cause legitimate businesses and entrepreneurs from being able to register the domain names associated with the entrepreneur or business’s name. There is no legal definition of cybersquatting. However, if a domain name owner registers and uses a domain name with the sole intent to sell it for profit, it may be possible to still acquire the domain name when it is registered in bad faith. In that case, the party seeking to use the domain name either can sue the squatter under the U.S. Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. ยง 1125(d), or have the matter arbitrated by ICANN.

Conclusion: Choosing a Domain Name Requires Careful Planning

As can be seen above, registration of a domain name is not as simple a process as it may first seem. Careful thought and some advance planning need to be given in order to purchase and register a domain name that does not infringe on a trademark or cannot be later viewed as cybersquatting. With the right planning, you can successfully find the right domain name for your personal or business website if you keep these issues in mind.

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About the author

Ashkaan Hassan

Ashkaan Hassan

Ashkaan founded the boutique Beverly Hills law practice, Nu|Legal, to change the way we think about law firms. While other firms focus on a narrow practice area, he developed a network of trusted attorneys to create a full service law practice that focuses on technology and emerging industries.

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