Copyright law does not protect domain names, but Trademark law may. Generally, the United States Patent and Trademark Office (USPTO) has tried to apply traditional trademark law to the examination of domain name service mark applications. A domain name qualifies as a mark when it is used in connection with the sale or advertising of goods or services. This includes all sites conducting e-commerce and also sites that provide Web-related services. Unlike a trademark, which is restricted by country and class of goods, domain names can be global and not limited by goods or service.
Internet Corporation for Assigned Names and Numbers
The Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization that has assumed the responsibility for domain name system management, administers the assignation of domain names through accredited registers.
Domain Name Disputes
Prior to November 1999, domain name disputes in the United States were decided by courts under the following three primary theories of trademark law:
- traditional trademark infringement, which requires that the allegedly infringing use cause a likelihood of consumer confusion;
- the assertion that a domain name “dilutes” the value of a trademark; or
- unfair competition claims asserted in cases in which the trademark was not federally registered.
In November 1999, Congress added a new cause of action to the Lanham Act with the Anti-cybersquatting Consumer Protection Act, which was expressly designed to prevent cybersquatting.
Choosing a Domain Name
One is at risk of losing a chosen domain name if the owner of an existing trademark convinces a judge or arbitrator that the use of the domain name makes it likely that customers would be confused as to the source or quality of the products. To be protected, a trademark must be distinctive. If the trademark owner has been able to register a name with the USPTO, it is probably distinctive.
Generic Terms are not Trademarks
Many domain names are potentially powerful domain names but they are generic because they describe whole categories of products or services. Generic terms can never be trademarks.
Use of Domain Names to Support Service Mark Registration
Domain names are used like telephone numbers and addresses. They often provide information as to how to contact the entity rather than functioning as identifiers of a service. Specimens of this type will be refused in the USPTO because they do not show service mark use of the matter presented for registration. The more distinctive the presentation of the domain name, the more it will be perceived by the USPTO as functioning as a service mark and not just as contact information for a particular entity. The domain name must be used as a source identifier and not just as an entity locator.
Some uses that may qualify as good service mark use of domain names include hard copy advertisements for a Web site in which the significant portion of the domain name has been highlighted or set off in some other way. A domain name used as a banner headline on the Web site itself would probably be seen as functioning as a service mark.