By Duane J. Higgins, ceo
In computing terms, firewall has many definitions. In history, the term firewall
originally referred to a wall intended to confine a fire or potential
fire within a building. 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."
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:
[in-heer-uhnt, -her-] Show IPA
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
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
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.