Domain names have become a necessity nowadays. Unfortunately, acquiring a domain name can be confusing, difficult, and time consuming. Before purchasing a domain name, an online business should consider the availability of the trademark and the availability of the corporate name in addition to the availability of the domain. The main steps in acquiring a domain name are described below.
1. Availability of registered trademarks. What key trademark will the company adopt in the future to identify itself as the source of its goods or services? For the branding strategy, will the company name be the same as the brand name? Will the trademark predominantly identify the business or a specific good or service? Once those questions are answered, care must be taken to ensure that the trademark is available. Trademark clearance searches can be performed to make this determination. A search is typically performed on the United States Patent and Trademark Office (PTO) Trademark Electronic Search System (TESS). Additional trademark resources for trademark searches may include state offices and Internet searches. For a fee, commercial search services are also available and include more comprehensive search databases.
2. Availability of the company name. In addition to trademarks, many Secretary of State offices prevent the registration of company names and DBAs that are similar. Before committing to the domain name, an analysis should be done to ensure that a matching business name can actually be registered. If it’s not available, you can still purchase the domain and adopt a corresponding trademark. However, knowledge of availability in advance is helpful.
3. Availability of domain names. Finally, now that the trademark and company name issues have been resolved, the search 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 that the domain name is available in the various app stores.
If the desired domain name is not available (either with a .com TLD or one of many other TLDs), the online business can acquire the domain name through a transfer from the third-party registrant. After acquisition, care must be taken to protect the domain from opposing parties who may try to trade the goodwill associated with the mark. Domain theft or hijacking are additional risks. The domain owner must also enable automatic renewal to prevent inadvertent loss of the domain registration.
While the above identifies a number of issues related to electronic commerce and Internet law that affect the acquisition of domain names, further analysis may be required. For more information, you can contact a domain name attorney with experience in domain name acquisition, trademark clearance, and corporate name clearance.
Disclaimer: As with any discussion of legal topics, this article is intended to be educational only and does not replace legal advice, provide legal advice, or form an attorney-client relationship with the reader. Please seek legal advice before making any decision. Also, please note that this article may not be updated, so the law and circumstances may have changed at the time you read this article.