To do business on the Web, you'll want to choose a great domain name. Unfortunately, that may not be as easy as you think. Many entrepreneurs have run into trouble after discovering that someone else has beaten them to the name-registering punch. Others have problems keeping their URLs when someone challenges their right to use a particular name. This sort of wrangle has plagued companies both big and small. In most cases, there are two options: trademark the name before someone else does, or buy it from its owner -- and then trademark it. Here are four variations on the theme:
Trademark it. Salon.com is a San Francisco-based Internet media company with revenues of $6.3 million. As its founder, David Talbot loved the domain name Salon.com, but so did a man in Texas who wanted to start a portal for hair salons. For nearly a year, Talbot had to content himself with a clunky alternative, Salon1999.com, before moving the site to SalonMagazine.com, where it resided for two years. Before an initial public offering, Talbot's vice president, Andrew Ross, negotiated the purchase of the coveted address for an undisclosed sum. Ross's challenger moved his portal site to Salon.net, and Talbot's company now owns the trademark to Salon.com.
Mediabistro.com (formerly Hireminds.com), a New York City job-search site for media people, took a different tack. "I didn't realize -- stupidly -- that I had to apply for a trademark for the name also," says founder Laurel Touby. "I figured, 'Hey, I'm using the name. I'm safe and set.' "But then a challenger from Cambridge, Mass., applied for the trademark for "Hireminds.com." He also registered such variations as Hire-minds.com, Hireminds.net, and Hiremind.com. "He called me and tried to buy my domain name from me, telling me he basically had all associated names," Touby says. The case was settled; the challenger got the name, and Touby got "several thousand dollars in expenses, lots of heartache, and sleepless nights. But it would have been too costly to go on."
Sometimes, the duel for names ends up as a draw. For example, when HotJobs.com, another job-search site in New York, went to trademark the HotJobs name, it found that two other companies -- including one direct competitor -- had already applied for it. In the ensuing battle, the Office of Patents and Trademarks declared the terms "Hot Jobs" too generic to be trademarked.
Buy the name. As it was being launched, Eve.com, a women's beauty and cosmetics retailer based in San Francisco, discovered that the URL was owned by Eve Rogers, a six-year-old girl in Virginia. The situation forced company founders Mariam Naficy and Varsha Rao to try reaching an accord with a kindergartner. Rogers's parents mediated negotiations with the retailer but left the final decision in their daughter's hands.
The partners consulted baby-naming books and conducted a study. Eve tested better than any other name. So they tried again, but the young girl balked. Idealab, the company's financier, encouraged Naficy and Rao to persevere. Eventually, they made the girl an offer she couldn't refuse. The ultimate price tag: a family trip to Disneyland, a Compaq desktop PC, $500 worth of merchandise from idealab-backed eToys, an honorary seat on the board for six months, and an undisclosed sum of cash. "Looking back, it's probably one of the best investments we've made," Naficy says.
"Please warn others to purchase their trademark along with their domain name to save themselves a lot of aggravation," says mediabistro.com's Touby.
The bottom line: Search one of the online databases of trademarks to make sure no one has a prior claim to your URL (for more information, try the U.S. Patent and Trademark Office at www.uspto.gov). Then file for a trademark as soon as you come up with the domain name you want. An added bonus: Trademarks can be used as collateral in gaining a bank loan or line of credit. (The mark's value is usually equal to your revenues.)
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