Domain Names and Trademarks FAQ

Get answers to your questions about domain names and trademarks, and how the two can conflict.

How can I find out whether a trademark I want to use as a domain name is already being used?

Because so much business is now being done online, most people will want to be able to use their proposed trademark as a domain name so that their customers can easily locate them on the Web.

The easiest way is to check if a domain name is available is at one of the dozens of online companies that have been approved to register domain names. A listing of these registrars can be accessed at either the InterNIC site or at the ICANN site. ICANN is the organization that oversees the process of approving domain name registrars. Every registrar provides a searching system to determine if a domain name is available. Type in the domain name choice and the registrar will determine if it is available.

If you find that a domain name is already taken, it's possible to locate information about the owner of the domain name. A simple way to check ownership is to use Whois.net. Type in the domain name, and the website provides the contact information supplied by the domain name registrant.

Beware that some registrants, especially those acting in bad faith, may supply false information about domain name ownership and in these cases, there's not much that can be done to track down the domain name holder.

What happens if there is a conflict between an Internet domain name and an existing trademark?

Even  if a company owns a federally registered trademark, someone else may still have the right to the domain name. For example, many different companies have federally registered the trademark Executive for different goods or services. All of these companies may want www.executive.com but the first one to purchase it —in this case, Executive Software —is the one that acquired the domain name and has the rights to it.

Sometimes a person (known as a cybersquatter) registers a trademark as a domain name hoping to later profit by reselling the domain name back to the trademark owner. If  you believe that someone has taken a domain in bad faith, you can either sue under the provisions of the Anticybersquatting Consumer Protection Act (ACPA), or you can fight the cybersquatter using an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN). The ACPA defines cybersquatting as registering, trafficking in, or using a domain name with the intent to profit in bad faith from the goodwill of a trademark belonging to someone else. The ICANN arbitration system is considered by trademark experts to be faster and less expensive than suing under the ACPA, and the procedure does not require an attorney. For information on the ICANN policy, visit the ICANN site.

Courts and arbitrators generally side with trademark owners in these disputes and order the cybersquatter to stop using the trademarked name. For more information on trademark law, see Domain Names and Trademark Law.

If you discover that the domain name you want to use has already been registered,  see What to Do If the Domain Name You Want Is Taken for more.

Can a business trademark a domain name for future use?

It is possible to acquire ownership of a trademark by filing an "intent-to-use" (ITU) trademark application with the U.S. Patent and Trademark Office (PTO) before actually starting to use the domain name. The applicant must start using the domain name within the required time limits -- six months to three years after the PTO approves the trademark, depending on whether the applicant seeks and pays for extensions of time. The filing date of this application will be considered the date of first use of the trademark as long as the applicant actually uses the trademark within the required time limits. For more information about trademark registration, see How Federal Trademark Registration Works.

For More Information

To learn about the most current information on domain names, changes to trademark statutes and case law, and the latest registration processes, get Trademark: Legal Care for Your Business & Product Name, by Stephen Elias and Richard Stim (Nolo).

When does an Internet domain name qualify as a trademark?

A domain name, such as nolo.com, can qualify as a trademark when it is used in connection with a website that offers services to the public. This includes all sites conducting e-commerce and sites such as Yahoo.com that provide Web-related services.

However, only some types of commercial domain names qualify for trademark protection. For instance, while domain names that use common or descriptive terms, such as healthanswers.com or stampfinders.com, may work very well to bring users to a website, they usually do not qualify for much trademark protection. This means that owners of such domain names generally won't have much luck stopping the use of these words and phrases in other domain names. In other words, by using common terms that are the generic name for the service (for example, "dictionary.com") or by using words that merely describe the service or some aspect of it (for example, "returnbuy.com"), the owner of the name will have less trademark rights against the users of similar domain names than she would if her domain name was distinctive.

For tips on choosing a domain name and a business name, see Nolo's articles Choosing and Registering a Domain Name and Pick a Winning Name for Your Business.

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