A frequent question among Internet entrepreneurs is “Can I trademark a domain name?” The answer is yes – in some cases. Generally, the rule is that you can trademark a domain name if it is original and not just a combination of ordinary dictionary words. Legal authority NOLO dot com has the following to say on the matter:
“For instance, while domain names that use common or descriptive terms, such as health answers dot com or stamp finders dot com, may work very well to bring users to a website, they usually do not qualify for much trademark protection.”
These domains, while catchy and memorable, are really just combinations of ordinary words that all people use. Instead, if you want to trademark your domain, it needs to be distinctive. Here are a few examples of distinctive domain names you are probably familiar with:
These domains are all candidates for trademark status because they are not ordinary and common words. Nothing beats speaking to a lawyer, but one of the best informal tests you can run your domain up against is the question, “If someone were to say my domain to another person, would it be very clear that they meant our website?” If the answer is no, your will most likely have a difficult time trademarking that domain.
Once you have a good, distinct domain in mind, the next step is to make sure that no one else already owns it. Fortunately, the Internet makes this process easy. The simplest way to check if a domain is available is by visiting a domain registrar. One of the better known domain registrars is Go Daddy, but you can also access this information at the ICANN website. ICANN is a particularly useful site, because they are in charge of approving all other domain name registrars. Simply type in the domain name you are thinking of and in seconds you will know whether or not it is available.
It may be that the domain you want is taken, but do not give up hope. It is actually common practice for people to buy potentially desirable domain names in hopes that someone with serious aspirations for that domain will pay more money to own it. If your dream domain is taken, visit WHOIS dot net to find out who the owner is. There is a fair chance that whoever owns this domain can be persuaded to sell it to you.
Now, a word of caution is in order. It can be tempting to buy a domain that you know another company holds trademark rights to and try to extort money out of them before handing it over. This is a dangerous mistake, and there is significant legal precedent for what happens to people who attempt this.
The reason lies in something called the Uniform Domain Name Dispute Resolution Proceeding, or UDRP. When you buy any domain name from any registrar, you agree to attend these proceedings if someone asserts trademark rights over the domain you bought. Every registrar includes this stipulation in their Terms of Service because ICANN mandates it. So for example, if for some reason Sony did not have a website, you could not buy Sony.com and set up your own website there. Sony would be fully able to come after you in court and demand that you give them that domain name.
An eye-opening e-book called “Your Future in Internet Scams” makes this point clear. Not only is a UDRP proceeding much cheaper and faster than actually suing someone, they tend to favor the trademark holder heavily: you as the domain holder will lose 70% of the time if someone asserts trademark rights over your domain. For this reason it is best to avoid the hassle and just come up with a distinct domain of your own to use.
In closing, the essential thing to know about trademarking a domain name is that it must be distinct. The more readily people associate your domain with you and not other things, the better chances your domain has of gaining and keeping trademark status.