Lawyers–whether in large firms or solo practices–contemplating taking the plunge to establish a presence on the World Wide Web usually begin by considering a domain name that is both easy to remember and descriptive of their business name or type of legal services.

As Web surfers know, securing the right domain name is often critical to reaching the specific goals you hope to achieve via creation of a site. In fact, registering your domain name should be contemplated before site development even begins.

The daunting news is that because domain names are issued by the Internet Network Information Center (InterNIC) on a first-come, first-serve basis, there is no guarantee that the domain name you prefer will not already be taken. And, because InterNIC does not perform a trademark search prior to the issuance of a domain name, individuals often register domain names that might be of value to popular trademark holders and, in turn, attempt to sell these coveted domain names to the existing trademark holder.

A well-highlighted example of this inappropriate activity was Joshua Quittner’s registration of "mcdonalds.com" Quittner was an entrepreneur and writer for Wired magazine. The hamburger-making McDonalds outfit ultimately challenged the case and obtained the domain name by "donating" $3,500 to a public school of Mr. Quittner’s choice.

Other situations where you may find your domain already taken are those in which your competitors have registered your chosen domain name. For example, Princeton Review registered the trademark of "kaplan.com," a direct competitor in the test preparation marketplace. Telephone communications giant Sprint registered "mci.com." Both registrations were, ultimately, canceled and awarded to their rightful owners primarily because Kaplan and MCI were registered trademarks of their respective companies.

New Guidelines

As a result of these examples and many others, the National Science Foundation/Network Solutions, Inc. (NSF/NSI) has continued to update its dispute resolution guidelines, the most recent of which became effective in February of this year. Previously, the guidelines provided that a domain name be suspended if a complainant can produce a trademark and if the registered domain name in question is confusingly similar to the registered trademark or service mark of the complainant.

Under the new guidelines, it is best for trademark owners challenging use of their domain name not to file a civil action until after attempting to have InterNIC place the domain name in question on "hold." InterNIC will place a domain name on hold if the complaining party can produce proof of an identical trademark registration that predates the registration date of the domain name.

In order to invoke this "hold" procedure, the trademark owner must include with the complaint to InterNIC an original or certified copy of a trademark registration, together with a copy of the written notice sent to the domain name registrant. The notice must clearly state that the registration and use of the domain name violates the trademark rights of the complainant and must allege the factual and legal basis for the assertion.

InterNIC, upon receiving the complaint, will request the domain name registrant to show proof of the ownership of the registrant’s own registered trademark or service mark which is identical to the domain name (without, of course, the .com or .net or other suffix.) If no trademark is produced within 30 days, the domain name will be placed on hold status, pending resolution of the dispute.

If either party files a civil action regarding the domain name registration, InterNIC will maintain the "status quo ante"–that is, if the domain name was placed on hold, it will remain on hold. If, however the domain name was not placed on hold prior to the commencement of the litigation, it will not be placed on hold.

Trademarks Count

In a recent case closer to home, Pawtucket-based Hasbro, owner of the trademark "Candyland," sued to enjoin Internet Entertainment Group (IEG) from using the domain name "candyland.com" for an adult entertainment Web site. Imagine Hasbro’s reaction when it learned that the well-known moniker for a classic board game targeting children and families was being used for pornography! Hasbro v. Internet Entertainment Group. The Seattle U.S. District Court enjoined use of the "candyland" domain name by IEG.

In these examples, which pit one business that actually owns a trademark against another that does not hold a trademark, the trademark holder almost always prevails. The courts continue to find that the use of someone else’s trademark as a domain name constitutes infringement of the mark.

But, what would the result be if two or more companies held trademarks to similar names? Thus far, the first company to register its domain name with InterNIC will prevail.

Consider the three companies that own trademarks with the name "domino": Domino Systems (a computer programming and graphic design firm based in Europe), Domino Pizza and Domino Sugar. Domino Systems is the holder of the domain name "domino.com." Domino Pizza holds the domain name "dominos.com" and Domino Sugar doesn’t appear to have a domain name at all.

Unfortunately for Domino Sugar, if the company should decide to develop a Web site it would be precluded from obtaining the domain name "domino.com." Again, this result highlights the importance of being first to register your domain name.

tlslaw.com

When the Providence and Boston law firm of Tillinghast Licht & Semonoff attempted to register "tls.com" as its domain name, the firm found the name already registered to another company. That URL was, in fact, held by Thought Link Systems of Ontario, Canada. TL&S ultimately and successfully registered "tlslaw.com." Upon further reflection, the URL "tlslaw.com" may, in fact, be preferable because it incorporates the initials of the firm’s logo and, at the same time, is descriptive of the services provided by the firm. The moral: if you want to obtain (register) a good domain name, you must be first.