Can domain names be registered as trademarks is a common question, and the simple answer is yes. But not all domain names function as trademarks. A domain name is part of a Uniform Resource Locator (“URL”), which is the address of a site or document on the Internet. A domain name is usually preceded in a URL by “http://www.” The “http://” refers to the protocol used to transfer information, and the “www” refers to World Wide Web, a graphical hypermedia interface for viewing and exchanging information. In general, a domain name is comprised of a second-level domain, a “dot,” and a top-level domain (“TLD”). The wording to the left of the “dot” is the second-level domain. A TLD is the string of letters that follows the last “.” or “dot.” Generic top-level domain names are .com, .info, .biz, .org, and .net.
Generally, when domain names are used as trademarks or service marks neither the beginning of the URL (“http://www.”) nor the gTLD has any source-indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address. The average person familiar with the Internet recognizes the format for a domain name and understands that “http,” “www,” and a gTLD are a part of every URL.
However, in 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) authorized the launch of a program to introduce new gTLDs. Currently, there are over 100 different gTLDs. Now the question is can domain names be registered as trademarks including the gTLD? To the extent that some of the new gTLDs comprise existing registered trademarks or service marks that are already strong source identifiers in other fields of use, some of the premises mentioned above may no longer hold true for such gTLDs (e.g., a gTLD consisting of a coined mark is not an abbreviation of an entity type or class of intended user of domain space). Where the wording following the “.” or “dot” is already used as a trademark or service mark, the appearance of such marks as a gTLD may not negate the consumer perception of them as source indicators. Accordingly, in some circumstances, a gTLD may have source-indicating significance.
As searchers, we need to pay attention to unique top-level domain names because those could possess trademark significance. However, the vast majority of top-level domain names still retain their non-source identifying significance.