An important step for any new business is obtaining a domain name that will serve as the online address for the company and a destination for customers and other business partners seeking information about the company. Responsibility for assignment of IP addresses, registration of associated domain names, creation and management of Top-Level domain name systems (TLDs) and general oversight of the operation of the Internet domain name server system has been vested in the Internet Corporation for Assigned Names and Numbers ("ICANN"). ICANN is an internationally organized, non-profit corporation dedicated to preserving the operational stability of the Internet; to promoting competition; to achieving broad representation of global Internet communities; and to developing policy appropriate to its mission through bottom-up, consensus-based processes. Among other things, ICANN is responsible for accrediting registrars of domain names. In addition, ICANN takes the lead in creation of new TLDs.
There are several types of TLDs. TLDs with two letters (e.g., .ca, .jp, and .mx) have been established for almost every country and external territory around the world and are referred to as "country-code" TLDs. Each country-code TLD has its own manager who is responsible for operating the domain in a way that takes into account the specific economic, cultural, linguistic, and legal factors in the particular geographic area. Most of the TLDs that have three or more characters are referred to as "generic" TLDs (gTLDs). Seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org) were created in the 1980s—three of them (.com, .net, and .org) were available for registration and use without restriction and the other four could only be used for limited purposes. Seven new gTLDs (.biz, .info, .name, .pro, .aero, .coop, and .museum) were introduced in 2001 and 2002. Three of these (.aero, .coop, and .museum) are sponsored top-level domains which are specialized an overseen by a sponsor that represents the narrower community that is most impact by the gTLD and is responsible for formulating operational policies for the gTLD. The operational policies for unsponsored domains are set by the global Internet community acting through the processes established by ICANN. ICANN continuously solicits and evaluates applications additional gTLDs and new gTLDs that have gone live during the last few years include .cat, .jobs, .mobi, and .travel.
In general, a domain name is comprised of a second-level domain, a "dot," and a TLD. The wording to the left of the "dot" is the second-level domain, and the wording to the right of the "dot" is the TLD. For example, if the domain name is "XYZ.COM," the term "XYZ" is a second-level domain and the term "COM" is a TLD. The organization that is responsible for a particular TLD—the sponsor or registry operator—must establish and maintain a registry of the second-level domains within the TLD. In general, domain names should be descriptive of the business they are associated with and easy to remember. Proposed domain names can be quickly checked for availability using various free online databases, such as http://www.whois.net.
Domain names may infringe the trademark or tradename of another business if there is a likelihood of confusion, mistake, or deception in the relevant market. To minimize the possibility of an infringement action, federal and state trademark searches should be performed for all potential domain names. Trademark Electronic Search System (Tess) is a service available on the Patent and Trademark Office’s web site that provides a searchable database of trademarks. This free database provides a means for performing a fast, high level search for trademarks that may be the same as or similar to a client’s prospective domain name. This service should not, however, be used as a substitute for a thorough trademark search performed by a professional trademark search company.
Once a domain name is chosen, the name should be registered, if possible, as a trademark or service mark with the United States Patent and Trademark Office ("PTO"). Domain names may be registered with the PTO provided they are actually in use as trademarks or service marks, and not merely as addresses. In September 1999, the PTO issued guidelines to its trademark examiners for the evaluation of applications to register domain names. Examination Guide No. 2-99 is available on the PTO’s Website at http://www.uspto.gov/web/offices/tac/notices/guide299.htm. Because clients may be conducting business internationally through their Websites, registration of the domain names in foreign jurisdictions should also be considered.
The content in this post has been adapted from material that will appear in California Transactions Forms: Business Transactions (Fall 2008) and is presented with permission of Thomson/West. Copyright 2008 Thomson/West. For more information or to order call 1-800-762-5272.