Searching for trademark availability is NOT the same as searching to register a domain name address. A dot com address search, for example, will focus on exact spellings, with no consideration given to similar names or use with related products and services.

Mistakenly, many times a new company will assume its trade name is legally clear merely because it was able to purchase a dot com or other domain extended name.

If a domain is later discovered to be taken after you have obtained a trademark, then you may open an arbitration hearing with ICANN to seize the new domain name. Trademark law is based upon conflicts and similarities, thus any infringing domain name may be acquired.

Does my domain name have protection over a registered trademark or a prior common law usage?

No, prior trademarks and common law usage, even close similarities have substantive rights over a new domain name. Network Solutions is the organization responsible for registering Internet domain names and do have a domain name dispute policy.

In summary:

1. Network Solutions is shifting the burden of researching possible trademark infringement to the domain name registrant

2. ICANN will arbiter or resolve disputes. They will take steps toward resolution, and have outlined a procedure complainants must follow

3. Prove the complainant owned the trademark prior to creation of domain name.

4. Prove the complainant notified the registrant of possible infringement.

5. The trademark must match exactly or be very close to the domain name, (not counting the extensions like dot com or dot edu).

6. If the domain registrant cannot prove prior trademark registration to that of the complainants, he/she must relinquish the name, choose a new name or file a lawsuit.

7. If the domain registrant does not file a lawsuit, the name will be suspended and no one can use it until proof of resolution has been submitted to ICANN.

8. If the complainant files a lawsuit without going through the procedures above, the status of the domain name will not change. So if it is active, it remains active. If it's on hold, it stays on hold (an incentive to use the procedures outlined above).

   
   

   
   

All registrars in the dot com, dot net, and dot org top-level domains follow the Uniform Domain-Name Dispute-Resolution Policy. Under the policy, 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.

Disputes alleged to arise from abusive registrations of domain names (for example, cyber squatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.

To invoke the policy, a trademark owner should either (a) file a complaint in a court of proper jurisdiction against the domain-name holder (or where appropriate an in-rem action concerning the domain name) or (b) in cases of abusive registration submit a complaint to an approved dispute-resolution service provider.