A close relationship exists between trademarks and rights in domain names. A trademark is a word, name, symbol or device which is used in connection with goods to indicate the source of the goods and to distinguish them from others’ goods (a service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product). Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. As such, in order to serve as a trademark, the word, name, or symbol must not simply convey to the buyer qualities or characteristics of the goods, but it must be unique and distinctive.

A trademark comes into existence as soon as a business starts using that trademark in commerce. While registering a trademark with the United States Patent & Trademark Office offers a trademark holder certain benefits, it is not necessary to establish rights in a trademark.

Once a business has established rights in a trademark, it can prevent others from using that trademark—or confusingly similar words or symbols—on similar goods. However, the trademark holder generally cannot prevent another person from using that trademark on different goods, where there is no likelihood of confusion. As an example, the car company Lexus cannot prevent the computer services company Lexis-Nexis from using the trademark Lexis, because cars and computer services are so different that there is no likelihood of confusion.

Trademark law dovetails closely with anti-cybersquatting law. The owner of a trademark has the right to prevent another person from using the trademark—or a confusingly similar variation of the trademark—in a domain name, if the person has a bad faith intent to profit from the domain name. Congress has determined that it is unlawful for a person to register a domain name containing another’s trademark with an intent to profit on the other’s trademark. However, a trademark holder cannot prevent another from using the trademark in connection with sufficiently different goods. As such, Congress has required a trademark holder to show that the cybersquatter had a bad faith intent to profit from the domain name.

Occasionally, people speak about a domain name copyright or a copyright in a domain name. These are inaccurate and misleading expressions. Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works. The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Because it is unlikely that a domain name constitutes an “original work of authorship” as used in the Copyright Act, this body of law is not the most suitable for attacking cybersquatters.