Domain names have become a necessity in today’s day and age. Unfortunately, acquiring a domain name can be confusing, difficult, and time-consuming. Before acquiring a domain name, an online business should consider trademark availability and corporate name availability in addition to the domain’s availability. The following discusses the primary steps of domain name acquisition.
1. Trademark Availability. What key trademark will the business adopt going forward to identify itself as the source of its goods or services? For the trademarking strategy, will the business’s name be the same as the trademark? Will the trademark predominately identify the business or a specific good or service? Once those questions are answered, care should be taken to ensure that the trademark is available. Trademark clearance searches can be conducted to make this determination. Typically, a search is done of the Unites States Patent and Trademark Office (PTO)’s Trademark Electronic Search System (TESS). Additional resources for trademark searches can include state trademark offices and Internet searches. For a fee, commercial search services are also available and include more comprehensive search databases.
2. Company Name Availability. In addition to trademarks, many state Secretary of State offices prevent registration of company names and DBAs that are similar. Before committing to the domain name, analysis should be done to ensure that a matching company name can actually be registered. If not available, the domain can still be acquired and a matching trademark adopted. Knowledge of availability in advance is helpful though.
3. Domain Name Availability. Finally, now that the trademark and company name issues have been addressed, searching for domain name availability can be completed. If the domain name is intended to be used in conjunction with an app, a fourth step may be needed to ensure the domain name is available at the various app stores.
If the desired domain name is not available (either with a .com TLD or one of the numerous other TLDs), the online business may acquire the domain name through a transfer from the third-party registrant. After acquisition, care should be taken to protect the domain from adverse parties that may seek to trade off the goodwill associated with the brand. Domain theft or hijacking are additional risks. The domain owner should also enable auto renewal to prevent loss of the domain registration due to inadvertance.
While the above identifies a number of eCommerce and internet law issues affecting domain name acquisition, an in-depth analysis may be required. For more information, you may want to contact a domain name attorney with experience in acquiring domain names, trademark clearance, and corporate name clearance.
Disclaimer – As with any discussion of legal topics, this article is intended to be educational only, and is not a substitute for legal advice, nor does it provide legal advice or form an attorney-client relationship with the reader. Please seek legal counsel before making any decisions. Also, please note that this article will likely not be updated, so the law and circumstances may have changed by the time you have read this article.
