Domain Names with Trademarks? | Kennedy Law, P.C.

Can I register the domain name Or how about

Author: Stephen A. Kennedy

If you knew the answer was “yes, if it’s still available,” then pat yourself on the back because technically, that is right. If you answered “yes, but it’s a bad idea” you get a gold star. Let’s talk more about that. It all started with the U.S. military….

Prior to 1998, regulating Internet names had been a side-project of Jon Postel, a computer science researcher working for the Department of Defense. The growth of the Internet quickly made his side-project impossible to handle, so the Department of Defense handed it off to the Department of Commerce. In 1998, the Department of Commerce started a non-profit organization called the Internet Corporation for Assigned Names and Numbers (ICANN) whose purpose was to bring order to the namespace Internet universe. ICANN quickly became the bureaucracy responsible for overseeing the assignment of the top level domains such as .com, .net, .edu, .org, .gov and other extensions we commonly see today. For private enterprise, the .com and .net extensions have been the most popular but new extensions have been approved on a semi-regular basis. There are quite a number of interesting domain extensions available such as .guru, .menu, .shoes, .sexy and the list goes on.

In the past, if someone stole a trademark and used it as a domain name, the Uniform Domain-Name Dispute Resolution Policy (UDRP) provided an efficient, albeit slow moving forum, for the trademark owner to stop the infringing use. Recently, ICANN initiated a second option designed to be faster than the UDRP process. The Uniform Rapid Suspension (URS) system is a rights protection mechanism which provides trademark owners with a faster alternative in domain name disputes. Among the advantages of the URS are quicker adjudication and lower cost. However, the URS has disadvantages that should have trademark owners carefully considering which system to use.

For example, within seven days after filing a complaint, a major brand owner can successfully challenge domain names registered using the new top level domains, such as .guru, .lawyer or .shoes. Hypothetically, someone trying to register a domain called could be sued and have that name suspended in about a week. Now that’s rapid. However, a disadvantage of the URS is that is does not provide for the transfer of the domain name in question, and the brand owner cannot use the domain name during the suspension period. So in our hypothetical, Apple could stop a person from using in just a few days, but Apple cannot take and use the domain using the URS system. Basically, the URS suspends use, but does not transfer ownership. The same is true for The trademark Super Lawyer® is owned by Law & Politics Media, Inc. which is a very large and powerful media company. This is the organization that evaluates attorneys, and if appropriate, selects individuals as “Super Lawyers” and let’s just say you don’t want to step on their cape. I myself have been lucky enough to be a “Super Lawyer” since 2012. (Thank you, LPM)

Trademark owners and their counsel must understand the benefits and limitations of the URS, UDRP, and other enforcement options to ensure that they are adequately protecting their trademarks online in the evolving domain name space.

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