Can you trademark a domain name? Amazon.com is a registered US trademark of the company by the same name, including not just the word “Amazon”; but also the dot com. There are numerous examples of this, although they have in common the brand value of the name inclusive of the dot com appendage.
How many businesses can say this, really? More commonly, a web domain reflects the name of the business or the brand or the celebrity (or whatever), and the “.com” is simply a location finder on the internet. So, for example, “ExxonMobil.com” is not registered as a trademark. Nor is Apple.com, even though the brands without the .com are.
The issue is a question of what name you’re trying to protect. Cybersquatting laws (and some famous cases) prevent certain well-wishers from staking claim to web domains of trademarked terms such as “McDonalds.com” and “Walmart.com”.
Plus, trademark law will frequently allow enforcement rights to an owner against unauthorized uses of a domain. So, for example, even without trademark rights to “Amazon.com”, Amazon still would have rights to the name “Amazon”. And, generally, a use of “Amazon.com” would be viewed as an infringement of the trademark rights of “Amazon”, if only for the reason that use of Amazon.com would probably suggest that the source of the use was Amazon itself.
Which of course raises the question of why you would need or want trademark protection for a domain name in the first place. If you intend to use the full domain in building your brand – inclusive of the .com or .net – that might make sense. But for an established non-domain trademark, no one would seriously be able to claim rights to peddle their business under a competing and nearly identical web domain anyway.
Well, maybe almost never. The 2008 cybersquatting case involving The Economist magazine’s failed claims to wrestle “theeconomist.com” web domain might suggest a cautionary lesson. In that case, litigated under the expedited cybersquatting relief offered through the World Intellectual Property Organization (WIPO).
The Economist had to prove three elements: (1) that the web domain name is identical or confusingly similar to a trademark or service for which The Economist had rights, (2) that the current owner of the domain has no rights or legitimate interests in the name, and (3) that the current owner registered and used the name in bad faith.
The Economist ran into a problem faced by owners of commonly-used terms (like, say, “the economist”) that have nonetheless achieved trademark status, namely the likelihood that somebody has made (or claims to have made) a legitimate domain use of the trademark. In this case, a Maryland man had purchased the domain “theeconomist.com” in 1996 in order to host a tribute website to former Federal Reserve Chairman Alan Greenspan. (Seriously.) The Economist was unable to show – or failed to adequately show to the judges’ satisfaction – that the current owner’s use was illegitimate or, for that matter, registered and used in bad faith.
The Economist may have had a stronger case if its trademark rights extended to use of the name inclusive of the .com appendage. For the WIPO procedure, however, the proving of trademark rights need be only in the name itself, and the relief available is limited to transfer of the domain – not trademark infringement remedies. Claims to trademark infringement in the full domain name would have to be pursued in federal court.
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