Trademark this

There’s been a lot of talk lately about companies trying to muscle their way into domain name ownership by virtue of their trademarks. For instance, someone trying to buy the domain name coke.com might run into a stone wall because Coca-Cola, Inc. already has the trademark.

But what about those domain name registrants that not only apply for the domain name, but then trademark it, as well?

Oftentimes, when you are registering a domain name with InterNIC, the current registrar for all .com, .org and .net requests, your request is doublechecked to make sure it is not already trademarked by someone else. But that system is not foolproof and people have been able to procure domain names with trademarks in them. These situations lead to out-of-court settlements or legal battles where the company either pressures the domain name owner enough to cough it up or the company pays big bucks to get a hold of it.

But what would a company do for a trademark to accompany the domain name if it did not have the foresight to apply for a trademark itself? A lot.

Whitehouse.com is one example. This URL does not lead you to the White House’s Web site. Instead, it sends you to a page with pictures of Bill and Hillary in S&M garb. A recent news story outlined the extremely unsuccessful attempts by White House attorneys to squash this particular paragon of free speech.

To get around the lawsuits, the dudes at Whitehouse.com have come up with an interesting - but not particularly valid - approach: they filed trademark applications on all the names they sell and are willing to include the trademark rights as part of the deal. Sound good? Well, sort of. This will work fine if they receive approval for the trademarks. Then again, if they don’t, or if approval is pending when opportunity comes knocking, then the effort may have been worth absolutely nothing.

Another example is altavista.com. What should naturally lead users to Digital’s AltaVista search engine site instead takes them to a page for AltaVista Technology, Inc. Visitors are greeted by a message that reads, “AltaVista Technology, Inc. is not affiliated with Digital Equipment Corporation, AltaVista Internet Software, Inc. or the AltaVista Internet Search Service. The AltaVista Internet Search Service may be found at http://www.altavista.digital.com.”

Because AltaVista Technology owned the "altavista" trademark, it could have forbidden Digital to use "AltaVista" for its then new search engine, but instead the two companies entered into a nonexclusive licensing agreement.

What is interesting about both of these examples is the approach to moneymaking by buying and selling domain names – something that most network administrators and CIOs should watch carefully.

Although people are not supposed to go out and buy lots of domain names on speculation, they do - damn the InterNIC rules that say they can't. We know there is virtually no enforcement of this guideline. And as more registrars start taking orders, as called for in the government’s domain name overhaul plan, the chances of overlapping registrations increases.

The only hope for companies is to trademark everything that could potentially be trademarked. Product names, service names, division names. Why? Because, as intranets and mini-Web sites become more prevalent, companies are going to want to register these names as domain names. And if the new generic top-level domains, such as .shop and .web are added to the fold, then they will want to register within these, too.

But remember, trademark approval is not something that comes quickly. The average process of filing, reviewing for other potential trademark infringements, and receiving approval can take years.

Who is to say that somebody else out there has not filed first? Happens more than you might think. Or that somebody else who filed after the Whitehouse.com guys actually has "first use" of the name (i.e., they established the name in the business community first – something the trademark officials often give plenty of weight to in their decision to award or not to award to a particular applicant a trademark).

Can you be sure that your new product name is both available and not the subject of a domain name dispute in the future? Probably not. This means that you should budget some dollars for legal fees as part of that new Internet marketing campaign now, rather than later.

You might even want to check to see if your new name is not already in use by somebody with a different domain extension. Do you really want your potential customers to visit "pleasurecruise.net" instead of your own "pleasurecruise.com"? If it is a competing cruise line, probably not. And if it is an Internet porn site – certainly not!

If you think you’ve got the ideal solution to the messy naming game, I’d like to hear it. Drop me a line or visit our Forum.