pdf

Guidelines for the Reservation of Internet Addresses and Trademark Registration of Internet Domain Names

Date: Feb 24, 1997


As an increasing number of organizations consider establishing world wide web sites and home pages, it is vital to understand clearly the procedures for 1) establishing an Internet address and 2) protecting trademarks on the Internet. The latter step can be critical in broadly protecting a company's rights in its name and trademarks. To enhance your organization's understanding of these matters, this article sets forth some general guidelines for both reserving an Internet domain name and registering domain names as trademarks.

Background

The Internet is actually a network of thousands of independent networks, containing several million independent "host" computers that provide information services.

To obtain or exchange information with a particular Internet host computer, the user must know the host's unique domain name to make a connection. A domain name is a company's address or telephone number on the Internet. Unfortunately for Internet users, there is no complete directory of the domain names of businesses. Thus, users interested in communicating with a particular company, obtaining information about its products or services, or buying its products andservices, are often forced to guess the domain name of the company. By using a domain name that includes a company's best-known trademark, or a derivative of that mark, a company ensures that its promotions, information, and commercialofferings are easy to find.

The first step in setting up an Internet address is to get an Internet domain name. Since domain names have been assigned to date without close scrutiny of trademark ownership issues, corporations and associations have begun registeringtheir Internet domain names as trademarks with the United States Patent and Trademark Office (PTO), or filing applications on an intent to use basis, even when they have not yet established an Internet service, to protect their rights. Both are discussed below.

Guidelines for Reserving an Internet Domain Name

Internet domain names are assigned by the Internet Network Information Center (InterNIC). While the rules governing the reservation of domain names are constantly being modified, InterNIC has established some general policy guidelinesfor this process. These guidelines are set forth below.

    • InterNIC now limits domain names to one per organization. InterNIC does not provide a legal definition of the term "organization," but some wholly-owned subsidiaries have been refused a separate domain name. (1)

    • Internet domain names are assigned on a "first-come, first- serve" basis. As a result, companies cannot prevent third parties from using the same, or a similar, name as a domain name unless the domain name is a registered trademark.

    • Domain names include generic abbreviations that provide some indication as to the type of entity at that address. These are as follows: (1) ".org" is for not-for-profit organizations; (2) ".com" indicates a commercial for-profit organization, such as a private company; (3) ".net" is for Internet infrastructure; (4) ".edu" is for colleges and universities; and (5) ".gov" is for federal government agencies. InterNIC will allow two identical names having different entity indicators to coexist. For example, "acme.com" and "acme.org" can both be reserved as separate domain names.

    • Domain names may not exceed twenty-four (24) characters, including the abbreviation indicating the entity of the organization.

    • In assigning domain names, InterNIC seeks only to ensure that two entities do not try to use the identical domain name. Unlike the trademark registration process at the PTO, InterNIC does not perform any "likelihood of confusion" analysis with prior reserved domain names.(2) Moreover, InterNIC does not consider trademark infringement issues when assigning domain names. As a result, "acme.com" and "acme1.com" could probably be reserved as separate domain names by different parties, but might be deemed "confusingly similar" from a trademark standpoint, depending on the circumstances.

    • If a domain name is assigned to a party that has not registered the name as a trademark, a party who has a prior trademark registration (a pending application will not suffice) for the domain name, or an earlier date of first use, can request that InterNIC suspend use of the domain name until a court determines which party is entitled to use it. Under the InterNIC rules, the domain name owner must produce a trademark registration certificate within thirty (30) days of the challenge from an outside party.

    • If two parties have separate trademark domain name registrations on the same mark for completely different goods and/or services, only the first party to reserve the mark as its domain name with InterNIC can use the mark on the Internet.(3) (This is the case regardless of which party first registered the domain name as a trademark with the PTO.)

    • InterNIC has imposed an annual maintenance fee of $50, with payment for the first two years due at the time the initial application to reserve the domain name is filed.

    • Failure to use a domain name on a regular basis for ninety (90) days or more is grounds for InterNIC to require the owner to relinquish the name to InterNIC for re-assignment to another party.

Guidelines for Registering a Domain Name as a Trademark

While Internet domain names must meet all currentPTO criteria to be federally registered trademarks,(4) the PTO hasalso established certain additional guidelines for registeringdomain names. These guidelines are set forth below.

    • The domain name must be used as a trademark; if an individual is using a domain name only for communicating personal information, he would not be using the domain name as a trademark, and the name could not be registered at the PTO.

    • The domain name must be used for one of the three acceptable Internet services recognized by the PTO. These services include (1) communications provider (International Class 38) -- service enabling parties to communicate with each other (i.e., AT&T, MCI, etc.); (2) access provider (International Class 42) -- service providing computer technology to access the Internet (i.e., America Online, Prodigy); and (3) content provider (International Class depends on the service) -- service providing information on the Internet in a discrete area (i.e., travel, financial, etc.).

The policy governing the reservation of Internetdomain names with InterNIC and the rules for registering thosenames as trademarks with the PTO are both constantly evolving. Asa result, it is difficult to predict with any great certainty howthese respective rules will ultimately affect a company'sinterests. Nevertheless, we trust that this summary of InterNIC'sand the PTO's respective existing guidelines will assist inbecoming established on the Internet, while at the same timeprotecting its trademark interests.

Footnotes

(1) While InterNIC does not have a writtenpolicy for determining whether two entities under the samecorporate umbrella are eligible for separate domain names, itappears that so long as the two entities have separate mailingaddresses they can register separate domain names. When the twoentities have the same mailing addresses, however, the outcome isless certain.

(2) The principal hurdle to federaltrademark registration involves the PTO's statutory prohibitionagainst registering any mark which is "confusinglysimilar" to another existing registered mark. Judgments asto confusing similarity are subjective, and involve a multitudeof factors, including (1) the similarity in sound and appearanceof the marks, (2) the similarity of the goods or services onwhich the marks may be used, (3) the channels of trade in whichthe goods or services are sold, and (4) the sophistication of theconsumers for the products or services involved.

(3) This is different than trademark lawwhich allows two identical marks used for completely differentgoods and/or services to both be registered assuming that noconfusion exists among consumers of the goods or services.

(4) As a result, a domain name that isconfusingly similar to a registered trademark, or is generic ordescriptive, will be refused registration at the PTO. Forexample, the domain name "computer.com" could probablynot be registered as a trademark.

For more information, please contact Sheila Millarat (202) 434-4143, millar@khlaw.com.