Knobbe Martens Olson & Bear LLP - Intellectual Property Law

How Do I Obtain A Domain Name?

Jeff van Hoosear, Trademark Partner
jvanhoosear@kmob.com

First, a domain name is an (unique) identifier that corresponds to a numeric routing address called an Internet Protocol (IP) address. Computers use IP addresses to find and send information. Thus, a domain name is like a telephone number - it is where you can be reached. By obtaining a domain name, you're obtaining the "telephone number" for your place on the Internet. Your website at this domain would be equivalent to your phone. For example, www.kmob.com (the domain name address for Knobbe Martens Olson & Bear) corresponds to the IP address of 208.45.168.144. A domain name, such as "kmob", is far easier for a person to remember than the lengthy numerical string of the IP address used by the computer.

You don't have to be a "techie" to obtain a domain name. Further, you can obtain a domain name whether you already have your website created or not. In fact, you can often have the company that you use to obtain your domain name to create and host your website. Obtaining a domain is: 1) fast (takes a few minutes or less); 2) simple (you probably have the few pieces of information you need - applicant name, contact person, address, telephone number, e-mail address - available to you); and 3) inexpensive (between $10-40 for a one year registration - longer time periods are usually available and the domains are just as easy to renew). There are a number of companies providing domain name registry services, that is, they'll obtain and register a domain name for you. Type in "domain" and "register" in any web browser and you will find hundreds of options. Not all registrars are equal, so be certain the registrar you're using has a good reputation, good customer service and a good pricing structure. Two of my favorites are www.godaddy.com and www.netnames.com.

When obtaining a a domain name, you need to understand that a domain name is broken down into primarily two components. These include the Top Level Domain (TLD) and a second level domain. The TLD is the rightmost portion of a domain name. For example, .com is the TLD domain in www.kmob.com. The .com is also an example of a generic Top Level Domain (gTLD). Other examples of gTLDs include .org, .net, .info and .biz. There are also country code TLDS (ccTLDS). These include .au (Australia), .br (Brazil), .ca (Canada) and numerous others. In addition to the TLD, there is at least a second level domain. In www.kmob.com, the "kmob" is the second level domain. If your desired domain name is already registered, you will be informed that it is "taken." Most registers will provide suggestions to you if your desired name is already taken, such as other "similar" second level domains or other gTLDs (for example, ".biz" or ".info.") to consider.

While domain names are generally registered on a first-come, first-served basis, be aware that just because a domain is available does not guarantee that you have the legal right to use it. This is primarily due to trademark rights. If you wanted to obtain the domain "jimmychooshoes.com" (even if it was available), you should expect to receive a nice legal notice (often referred to as a "cease and desist" letter") from the attorneys representing the trademark JIMMY CHOO. A domain name owner can substantially reduce the risk that a desired domain name will infringe on someone's trademark rights by doing some "due diligence" before investing the time and money in obtaining a domain name. You should never obtain a domain name without first investigating if the desired domain name is identical or similar to an existing trademark.

The following are a few things you can (and should) do before you obtain a domain name in order to avoid trademark infringement problems. Do a search on Yahoo and Goggle (the major search engines) to determine if the desired domain name is being used as a trade name, trademark or service mark. Review all the hits that look like your desired domain name is being used as a trade name, trademark or service mark. If you find a business, goods or services that are identical or similar to what you would offer in connection with your desired domain name, you should probably look for another domain name. Next, do a search of the United States Patent & Trademark Office database called the Trademark Electronic Search System (TESS). TESS contains all trademarks and service mark filed for registration on the federal level. If your desired domain name appears to be a registered trademark or service mark, you may want to find another domain name. In the alternative, a "search" firm such as Thomson-Compumark (www.thomsoncompumark.com) can do a trade name, trademark, service mark and domain name search for you. This search will look at those four important areas and costs approximately $800. If the search results show that there are any identical or similar trademarks, service marks, trade names or domain names, you should seriously consider seeking another domain name. Another option is to hire a trademark attorney (like myself) to perform the search and advise you on whether or not your desired domain name infringes another's rights. While a trademark attorney cannot guarantee that a domain does not infringe, she would be able to evaluate the risks involved and advise you accordingly.