IP Essentials: Q&A Series

Q In what top-level domains (TLDs) should I consider buying a domain name? A While .com and .gov are among the more well-known, there are currently over a thousand top-level domains. Consider strategically buying domain names to use while operating or marketing your business. You may wish to buy country- specific domain names in countries where you operate (such as .co.uk in the United Kingdom, or .cn in China). Defensively buying domain names to prevent others from buying them may be beneficial in specific circumstances, but it is impossible and cost-prohibitive to buy every variation of your brand name. Q Is it beneficial to have multiple domains for my business? A Maybe. You may wish to have some secondary domains redirect to your main website to capture variations in how visitors find your site. (For example, secondary domains “newyorktimes.com” and “nyt.com” each redirect to the primary domain “nytimes.com.”) Or, you may want to register domains for particular country-TLDs where you operate and create country-or language-specific websites which would cater to your audience in that country or language.

Q A domain registrar has written to say that someone is trying to register a domain name with my trademark but I can buy the domain first. Is this legitimate? A Usually not. Domain registrars generally do not research third-party trademark rights before registering a domain, so offers like this are typically solicitations intended to extract payment. Often, there is no third party trying to buy the domain. If such a domain is registered, it is best to monitor how it is used and consider bringing a UDRP action if necessary. And if the domain they are asking about is of interest to you, it can often be obtained through a reputable registrar. Q Can I register my full domain name as a trademark? A Possibly. If you use the full domain name in your marketing efforts, you may be able to register the full domain as a trademark. In a 2020 U.S. Supreme Court decision, the Court held that while the word “booking” was generic (and therefore not a trademark) for travel booking services, the domain name “booking.com” was not necessarily generic and could function as a trademark. Other trademarks registered since that decision include “sexyshoes.com” (for retail store services featuring “sexy footwear”) and “dunegear.com”(for off-roading vehicle accessories).

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IP ESSENTIALS: DOMAIN NAMES

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