An interesting point of view on new gTLD’s, trademarks and .com registrants was published today by Cybrands.com
Basically the author of the post is claiming that owning a .com can be better protection against potentially infringing new gTLD domain names than a trademark.
He calls it the .com firewall:
“In computing terms, firewall has many definitions.”
In domaining terms, what I’m referring to is the practice of registering the .com version of a domain name which can effectively quash incentive for anyone to register any other version of that particular name.”
The fact is that there are several practical advantages and inherent rights protections that are in play that are built into the fabric of owning and using a .com domain name for business purposes. :
Is owning the .com version (and using the name in commerce) of a particular domain name a rights protection strategy unto itself that you could employ. ”
Even possibly equal to or better than a registered trademark?
First of all, as far as your intellectual property rights are concerned. If you own a .com domain name and you use it in commerce you have very likely established common law trademark rights to that name.
According the the USPTO “businesses automatically receive common law trademark rights in the normal course of commerce.”
Common law trademarks are something that I like to call a “usemarks.”
The term “common law” indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law. Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark.
Now if course, registered trademarks are usually more powerful than common law trademarks, however, not necessarily and there is case law to prove that.
My main point has to do with the inherent value of owning the .com version of your domain name or website.
First of all this is the definition of “inherent” from Dictionary.com:
existing in someone or something as a permanent and inseparable element, quality, or attribute: an inherent distrust of strangers.
Here are a few related points:
If you own the .com version of a name, the name is not likely (highly unlikely) trademarked by another party.
The reasons are that if the name were trademarked by another entity you likely would have never been able to register it- or you would have already been asked to cease using it.
Either by court order or less formally.
Either way you would know that there is an issue with the use of the name.
There are too many rights protections mechanisms in place with the domain registries and with ICANN right off the bat. (see Trademark Clearinghouse) for one.
Also, you would have likely gotten tripped up with improper usage of the name if there were any conflicts. The high likelihood is that the business that owns the registered trademark would also have likely already purchased the .com version of the name.
If you use the name for trade/commerce then you have likely already engendered “common law” trademark rights which are actually significant. However, not likely as powerful as a State or Federally (USPTO) registered trademark. However, the “common law” mark could trump them all based on prior use and if it is a “strong” mark. (see usemarks)
The fact is that if you own the .com version of a domain name, no other party is likely to register the name with another extension and use it for business purposes.
Let me give you an example.
Lets say you own the domain name Trinexeo.com.
Just made that domain name up and it is currently unregistered.
So for my example, what if someone registered that domain name and used it for commerce.
They would likely have soon established common law trademark rights as well as developed a business brand with that name.
What if the chance of someone then going out and registering say Trinexia.biz or Trinexia.anything and trying to use it for businesss?
They would be foolish to use that name.
They may infringe your common law trademark.
They may create a confusingly similar business name which is no benefit to them.
So part of the inherent value of owning the .com version of your domain name is that it effectively can serve as an unofficial “trademark block” of sorts to further registrations.
Why would someone else waste their good money on another extension when you own the .com?
They might and you might sue them. They might register another version of your .com name and if they use the name in commerce (in violation of your common law trademark) they will probably send traffic and customers to your site business. They might try to trademark the name after you are already using the .com version in commerce and they will lose in arbitration.
So back to my main point regarding the value of owning the .com version of a good domain name that doesn’t infringe on another parties registered trademark, trade name or usemark. You can take the dot whatever.
I’ll take my .com domain name into battle any day of the week.
I call that my firewall.””””
Like I said an interesting point of view.
Of course we see companies starting on domains that are either available for registration or on the second market which can easily be confused with the left and right of the dot.
The only real case on record is the UDRP for Tes.co where the panel took into account the left and the right of the dot to find the registrant infringed on the TESCO trademark but again that was based on a trademark not just a .com registration.