What's in a name?

Plenty. Before you register your Web handle, check if it's trademarked

You finally branded yourself on the Web. You did the usual search to see if someone else had a domain name identical to the one you wanted to register. No problem. The name is yours to buy. Business is booming, when suddenly you get a letter from someone on the other side of the country saying you stole their company's trademarked name.

Online retail titan Amazon.com was sued by Amazon Books, a small California bookstore that had been operating under the name Amazon for years, long before the Website went online. The two parties settled out of court, with Amazon.com essentially having to get a license from the local retailer in order to hold on to its brand name.

BET Inc. sent a New Jersey teen, Aaron Doades, a cease-and-desist letter for trademark violations when he registered his Website as Rapcity.com. The Washington, D.C., cable channel had an afternoon music show of the same name. Doades, who alleges he wrote a letter requesting permission to use Rapcity.com as his URL but with the understanding he would call his site The Hood, is now suing the company for shutting down his site.

The problem lies in that domain name registries such as NSI will only confirm that no one else has registered the URL you requested. They don't tell you if the name's trademarked. How can you avoid infringing on someone else's business name? On the other hand, do you have any recourse if someone has bought the domain name for your trademark and is holding it for ransom?

Recent legislation has made it possible for you to protect your trademark and your personal name from "cybersquatters"--people who register Web addresses for trademarked names, or anybody's name, and then try to sell them for huge profits. "Cybersquatting is now recognized as a violation of federal law," says Brandon Schmid, an attorney at Perkins Coie L.L.P. in Seattle. "On November 29, 1999, the Anti-cybersquatting Consumer Protection Act went into effect" says Schmid. The law mandates up to $100,000 in penalties for "cybersquatters." Under the law, you can't, in bad faith, register someone else's trademark or his/her personal name--or a confusingly similar mark or personal name--as a domain name. "The complainant needs to prove bad faith," says Schmid.

If, by chance, your business has the same name as another company or you have the same name as a famous person, you have a better chance of proving you didn't register the domain name in bad faith (or basically to hold it for ransom), explains Schmid. Some disputes can be solved with letter writing, but there are formal resolution proceedings (Mandatory Administrative Proceedings or MAPs) through ICANN (Internet Corporation for Assigned Names and Numbers) that can be instituted.

Trademark holders can go to ICANN (www.icann.org) for arbitration in settling disputes about domain names. Still, if either party is dissatisfied with ICANN'S decision, they can file a civil suit against one another for trademark violations. If you do have a problem, Schmid says, "You're really going to want a trademark attorney."

One way to protect your online identity is to start--or restart--right. Rick Phillips is a Seattle intellectual property lawyer who focuses on Internet and computer law. He says there are three kinds of trade names: descriptive, such as "Electronic Checkbook," suggestive, such as "Check It" and fanciful, such as "Mercury Checks." The fanciful name doesn't necessarily have anything to do with the firm's goods or services, says Phillips, and it just may be your best bet for creating a trademark you can protect, on or off the Net. Remember that it's a trademark holder who can complain and get resolution. One way to prove you own a trademark, besides using it, is to register it with the U.S. Patent and Trademark Office (www.uspto.gov). The fee for registering your trademark is $325 for each class of goods or services for each name you register, notes Phillips.

"You don't have to be up and running to register your domain name or trademark. You can file `an intent to use a trademark' for a year," he adds. Phillips says the legal fees for registering a trademark vary--usually the whole package, including trademark registration, is $1,000 or less. That doesn't include the cost of a search to see if the trademark is taken, but you can begin that search yourself to eliminate obvious conflicts.

"Search for your name on the major search engines to see if there are potential conflicts," says Schmid. "You're looking for someone using that name with a similar purpose to what you intend to do with the domain name." There might be multiple businesses using a name within the same region without conflict, if they're far enough from each other in purpose or geography. If you get past your search with confidence, you can go to professionals that might search for about $350, depending on the amount of detail of the search, or do a more tedious search of online phone directories. You can do a search on the U.S. Patent and Trademark Office's Website

"That goes to starting a business as well as a domain name" says Schmid. "You want to search for a business name before you print up business cards and stationery, before talking to people about your business name. At the state level, the secretary of state has some records"

Prepare for the future and register your business name even if a Website isn't currently in the works. Tetranet Software, established publishers of Linkbot and other utilities for Web masters, changed its name to Watchfire at about the same time it released Version 5 of its software.

"We did not own the domain name rights to `tetranet.com,' so we had to call our Website `tetranetsoftware.com'--a cumbersome name that resulted in people not being able to find us on the Web," notes Michael Weider, president and CEO of Watch fire.

A word to the wise: if your company is a start-up, see a lawyer and do everything at once. Get your incorporation, L.L.C., partnership or business registration, licenses, trademark and domain name correct from the start.