Key Takeaways

  • Domain names are not automatically intellectual property but can gain protection if used as trademarks or service marks.
  • A domain name may be eligible for trademark protection if it is distinctive and used in commerce to identify a source of goods or services.
  • Cybersquatting and bad-faith registrations are common causes of domain disputes and are addressed through policies like UDRP.
  • Legal strategies include registering domain names with matching trademarks, monitoring domain use, and enforcing rights through litigation or arbitration.
  • The distinction between domain registration and ownership of intellectual property rights is critical for protecting brand identity online.

Domain name intellectual property refers to a person's or company's property regarding their domain name. These are unique internet addresses and are often used to find websites. As an example, the domain name wipo.int is what locates the website for http://www.wipo.int for the WIPO website.

What is a Domain Name?

A domain name can also form the basis of email addresses or file transfers. To get a trademark, a company will need to file with the United States Patent and Trademark Office (or USPTO). It should also be checked that no other person or company owns that domain name. Searching the USPTO database isn't possible, as many companies have names that don't have USPTO protection. A general internet search might locate other businesses using the desired name along with a TM symbol, which means they're trademarked and cannot be used. Another name should be created in this case.

As an example, nothing related to Google can be bought, such as .net or .biz, as they have the trademark. A domain name should have a unique sequence of the following characteristics:

  • Letters
  • Phrases
  • Other characters (like a punctuation mark)

It should identify a certain network or computer online and be the address users can go to in order to find information about the company. A registration authority assigns domain names, and there are top-level domains, or TLD, as well as second-level domains. The first gets assigned through ICANN-accredited registrars, such as .net or .org. The second is the country TLD, which is given out in every country by the government agency or private contractor.

When Do Domain Names Qualify as Intellectual Property?

Domain names themselves are not automatically intellectual property. However, when a domain name is distinctive and functions as a source identifier for goods or services, it may qualify for protection under trademark law. This typically happens when the domain is used in a commercial context and becomes associated with the business in the minds of consumers.

The United States Patent and Trademark Office (USPTO) may grant a trademark for a domain name if:

  • The name is more than merely descriptive or generic.
  • It is actively used in commerce.
  • It does not create confusion with existing marks.

This means domain names like brandname.com may be eligible for trademark registration if they meet the criteria, while purely generic terms (e.g., bookstore.com) are not.

What are a gTLD and ccTLD?

A generic top-level domain is a gTLD, which is for an internet address. This can be .net, .com, or .org. Recently, .aero, .pro, .info, .museum, and .coop were added for possible domain names as well.

A ccTLD, on the other hand, is the country code for a top-level domain. For example, .mx is for the country of Mexico. Nationally designated registration authorities administer these independently. There are 252 ccTLDs that are currently in the Internet Assigned Numbers Authority's database. WIPO created a database portal to perform searches when looking for country code top-level domains.

Registering Domain Names and Trademarks Together

To strengthen legal protections, businesses often register their domain names as trademarks. This dual registration ensures that the brand is protected both online and offline. The USPTO allows domain names to be registered as trademarks if the domain:

  • Is used on a website that offers goods or services.
  • Functions as a brand name rather than just a web address.
  • Meets distinctiveness requirements.

For instance, registering a mark like bluewidgets.com as a trademark can help enforce rights if someone registers a similar domain like blue-widgetz.net.

Domain Name Disputes

Domain names serve the purpose of allowing users to find people and computers easily. They are now business identifiers, which causes a conflict with the previous business identifiers system. These were here before the internet arrived and remain protected by intellectual property rights. Disputes over domain names often come from cybersquatting, which is when someone preemptively registers trademarks as domain names. They often register for businesses or famous people when they don't have an association with them. Cybersquatters often put the names up for auction or sell them to the person or company involved at astronomical prices.

They can also keep the registration to themselves and use the name of the business or person who is associated with the domain name to obtain business for their sites. These disputes in the new gTLDs will be subject to the Uniform Domain Name Dispute Resolution Policy. Most of the new registry operators are in the process of developing or have developed certain dispute resolution policies to squash disputes that happened during a start-up. WIPO is in charge of challenges under the start-up phases for .biz and .info.

Some registries have specific purposes to help resolve disputes about complying with the respective registration restrictions. The Internet community doesn't have an agreement where domain names need to register in order to prevent people from filing problematic names. There are different reasons for this. Allowing registration to be easy stimulates business' to the challenges involved in figuring out who has the principle of freedom of expression and rights to a name. The fact that domain names are increasing in value has encouraged more cybersquatting, which causes an increased number of disputes and litigation between the businesses whose name got registered and the cybersquatters.

Domain Name Dispute Procedures

Most parties look at the WIPO filing guidelines when they file and use the WIPO model response and WIPO model complaint. Parties should get familiar with the WIPO Supplemental Rules.

Protecting Your Domain as Intellectual Property

To protect domain names as intellectual property, consider the following best practices:

  • Register corresponding trademarks: This adds legal weight in domain disputes.
  • Use the domain actively in branding: Ensure your website displays your mark prominently.
  • Monitor domains and trademarks: Use monitoring services to watch for potentially infringing domains.
  • Act quickly against infringement: File UDRP complaints or take legal action under ACPA when necessary.

While domain registration provides basic usage rights, integrating trademark protection elevates the level of legal control and helps preserve your brand identity.

Common Legal Issues with Domain Names

Legal challenges often arise when domain names conflict with existing trademarks. These include:

  • Cybersquatting: Registering a domain name identical or similar to a trademark with the intent to sell it for profit.
  • Typosquatting: Using slight misspellings to divert web traffic from the legitimate brand.
  • Domain hijacking: Illegally accessing or transferring domain ownership.

Legal remedies can include cease-and-desist letters, Uniform Domain Name Dispute Resolution Policy (UDRP) actions, or filing a lawsuit under the Anti-Cybersquatting Consumer Protection Act (ACPA) in the U.S.

Businesses are advised to monitor new domain registrations and act quickly when infringement is suspected.

Frequently Asked Questions

  1. Can a domain name be trademarked?
    Yes, if it is distinctive and used in commerce to identify the source of goods or services, a domain name may qualify for trademark protection.
  2. Is owning a domain name the same as owning intellectual property?
    No, domain registration gives you a license to use the domain, but it doesn’t automatically grant intellectual property rights unless it functions as a trademark.
  3. What is cybersquatting?
    Cybersquatting is the practice of registering domain names similar to trademarks with the intent to resell them for profit or mislead consumers.
  4. How do I protect my domain name from infringement?
    Register it as a trademark, monitor for misuse, and use dispute resolution mechanisms like UDRP or legal action under ACPA.
  5. What’s the difference between a domain name and a trademark?
    A domain name is a web address, while a trademark legally protects brand identifiers like names and logos. A domain name may become a trademark if used as a brand.

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