The relationship between domain names and trademarks can be confusing. People often believe owning one automatically conveys ownership in the other. Not always.
Let’s Buy Google.com
In September 2015, Sanmay Ved made a rather astounding domain name purchase. Mr. Ved paid a whopping $12 to buy the Google.com domain name.
Yes, THAT domain.
Admittedly, the purchase was the result of an administrative error in the Google system, but many in the news reported the transaction as though Mr. Ved had effectively won the lotto. He had not. However, the purchase raises an interesting question. If you buy a domain name, do you automatically have rights to the trademark associated with the root phrase of the domain? [The root phrase is the word or words after “www” and before “.com”]
The answer is usually no.
Purchasing a domain name only provides you with the right to use that domain name as a placeholder for a website. If another party already owns the trademark for the root phrase of the domain, you may not even have that right.
Let’s return to the Google example. As you might imagine, the company has trademarked the “Google” name. The name is distinctive, and consumers associate it with Internet search. Given this, Mr. Ved would not have been able to keep the domain name even if he wished to. The trademark held by Google would override Mr. Ved’s registration rights. If Mr. Ved attempted to use the domain, he would’ve faced legal claims ranging from trademark infringement to illegal cybersquatting. In short, a losing bet.
In some cases, the purchase and use of a domain name can create trademark rights. When and how this occurs involves a discussion of the nature of a domain name.
Nature of Domain Names
From a trademark perspective, domain names are either “naked” or “clothed.” A naked domain exists where the root phrase does not appear on the website. Consider Google. Pull up the home page, and you see the word “Google” above a search box. This is a “clothed” domain name because the root phrase of the domain name [“Google”] appears on the page and is used by consumers to identify the service. If the word Google did not appear, then the domain would be considered naked.
The root phrase of a naked domain name cannot be trademarked merely because the domain is owned. The examining attorneys at the Patent & Trademark Office will reject such applications because the root phrase is not used as an identifier of the product, service or company in question. It simply acts as an address on the web, no different than a street address for your home. For example, consider a world where Amazon’s domain is bookstore.com. People would still refer to the company as “Amazon”, which would be the proper word to trademark.
Confused? There is a simple solution to this mess.
- Buy a domain name.
- Build a site, and incorporate the root phrase of the domain name on the site as Google has with its domain.
- Register for a trademark.
If you obtain both the ownership of the domain and a trademark for the root phrase, you have maximum protection. Contact me to learn more.
Richard A. Chapo, Esq.