Most businesses have both a name and a Domain name.
The procedure for protecting them is different.
First, your business name is protected with a Trademark.
Second, your Domain Name is protected by your owning it. The first to register the Domain Name owns it. Having a registered Trademark for the Domain Name you want does not give you any rights to the Domain Name.
Choosing a Name
Generally, you want both your trademarked name and your Domain Name to be the same to help simplify your brand and marketing.
So when choosing a name, look at the ability to both trademark the name and acquire the Domain Name.
Each are critical intellectual property rights you will want to protect.
Both are easier said than done.
The person who uses a particular mark in the geographic area where it operates, regardless of whether the mark is registered and owns the Trademark. But if your chosen mark is already registered by another company — even if you used it first — your registration will be rejected and you'll probably want a lawyer to help you proceed.
In theory, registering a trademark for a company name is pretty straightforward. Many businesses can file an application online in a short time. The simplest way to register is on the U.S. Patent and Trademark Office's Web site.
Before completing the online registration form, check the site's Trademark Electronic Search System (“TESS”) database to make sure another company hasn't already registered an identical or similar mark for the same categories of goods or services you offer.
When appropriate names are targeted they should be checked on both the Whois Directory as well as the USPTO database for pending and registered trademarks. And, if the names are available they should be discussed with a trademark attorney to confirm they are registrable as trademarks, and, if they appear to be available, whether there should be a further search of unregistered trademarks.
Effective domain names are critical components of a business's success in today's internet driven world. They are easy and inexpensive to acquire. It takes minutes to register a Domain Name and not much longer to establish a presence in cyberspace. However, the reality of acquiring the most desired Domain Name is complicated because it is already registered by somebody else.
However, if you already have a trademark and discover that someone else has registered a domain name after your entry into the market you have remedies for cybersquatting in two forums. Cyber squatting is defined as registering, trafficking in, or using a domain name with the bad faith intent to ultimately sell the domain to a party who owns a trademark found within the name for an inflated price. You can allege a claim under ICANN's UDRP. ICANN is the international arbitration system created by the Internet Corporation of Assigned Names and Numbers. You can also file a lawsuit under the ACPA. The ACPA is the Anticybersquatting Consumer Protection Act found at 15 U.S.C. § 1125(d)
Under the UDRP, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name.
To invoke the UDRP, a trademark owner should file a complaint in a court of proper jurisdiction against the domain-name holder. In cases of abusive registration, it can submit a complaint to an approved dispute-resolution service provider.
In addition, the owner of the name can file a lawsuit against a cybersquatter pursuant to the Anticybersquatting Consumer Protection Act (ACPA), which is at 15 U.S.C. § 1125(d). The ACPA is a federal law passed in 1999 that establishes a claim for registering, trafficking in, or using a domain name which is similar to, or dilutive of, an existing trademark or personal name. This law was designed to catch cybersquatters who purchase internet domain names containing trademarks or personal names without intention of creating a legitimate website.
The ACPA allows a trademark owner to sue a cybersquatter in federal court, and get a court order to transfer the domain name to the rightful owner. The cybersquatter may also be liable for damages to the rightful owner of the name.