Most churches have websites, and they promote their websites to the world by adopting domain names that tell people how to locate those sites. There are important legal issues associated with the use of domain names.
In general, a domain name is comprised of a second-level domain, a “dot,” and a top-level domain (TLD). The wording to the left of the “dot” is the second-level domain, and the wording to the right of the “dot” is the TLD. For example, if the domain name is “XYZ.com,” the term “XYZ” is a second-level domain and the term “com” is a TLD.
The following are examples of generic TLDs that are designated for use by the public:
.com—commercial, for-profit organizations;
.edu—4-year, degree-granting colleges/universities;
.net—network infrastructure machines and organizations;
.org—miscellaneous, usually non-profit organizations and individuals.
Each of the above TLDs is intended for use by a certain type of organization. For example, the TLD “.com” most often is for use by commercial, for-profit organizations. However, the administrator of the .com, .net, .org, and .edu TLDs does not check the requests of parties seeking domain names to ensure that such parties are a type of organization that should be using those TLDs.
An Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. The name must be presented in a manner that will be perceived by the public to indicate source and not as merely an informational indication of the domain name address used to access a website.
Churches that create a website for the sole purpose of advertising their own products or services cannot register a domain name used to identify that activity as a trademark or service mark. If a domain name is used in a way that would be perceived as nothing more than an Internet address where the domain name owner can be contacted, trademark registration will be refused.
Examples of a domain name used only as an Internet address include a domain name used in close proximity to language referring to the domain name as an address, or a domain name displayed merely as part of the information on how to contact the applicant. For example, if a church applies for trademark protection for its domain name, and encloses specimens of its domain name consisting of advertisements accompanied by the words “visit us on the web,” and does not show the domain name being used in connection with particular goods or services, then registration will be denied.
If a proposed mark is composed of merely descriptive terms combined with a TLD, trademark registration will be denied. Descriptive terms simply describe the product or service with which the domain name is associated. For example, “worldmissions.org” is a descriptive name because it simply describes the service being offered.
Similarly, trademark registration is not permitted for “generic” names. A generic name is one that refers to a class or category of goods or services. For example, the name “Bibles” would be generic, and so a domain name “Bibles.com” could not be registered as a trademark.
A domain name that is identical or confusingly similar to an existing trademark (in a similar class of products or services) also will be denied registration.
Domain names that infringe
Church leaders should understand that URLs and domain names may constitute trademark infringement if they incorporate the name of a registered trademark.
For example, let’s say that a church creates a website with the domain name “lightoftheworld.com.” A large, for-profit lighting company obtained trademark registration 25 years ago for the name “Light of the World.” Church leaders had no idea that their domain name conflicted with a registered trademark. It is possible that the trademark owner will sue the church for trademark infringement or a violation of the federal Anticybersquatting Consumer Protection Act.
The Anticybersquatting Act gives trademark owners important legal rights when confronted by speculators who purchase domain names for resale. For example, a speculator who purchased the domain name “Xerox.com” for sale (at an exorbitant price) to Xerox Corporation would quickly be dispossessed of the name by a federal court. This law does not protect a name that is not a registered trademark. Whether the church has violated either law will depend on a number of factors, including the likelihood of public confusion.
Before selecting a domain name for a website, church leaders should do a trademark search using the United States Patent and Trademark Office website (uspto.gov). Such searches are not foolproof, but they are fast, cost nothing, and can indicate the possibility of a future legal challenge. More comprehensive (and costly) searches can be performed by a trademark attorney. Many trademark owners routinely conduct Internet searches looking for website domain names that may infringe upon their trademark.
If a church has obtained trademark protection for its domain name, then it will be able to stop others from using domain names that are identical or similar (for similar goods or services).
What if a church has not obtained trademark registration for its domain names, but it has obtained trademark protection for the name of the program or publication associated with its domain name?
For example, assume that church X publishes a monthly journal called “ChurchLife.” It has obtained trademark protection for this name. It also operates a website using the domain name “ChurchLife.org,” but has not obtained trademark protection for this domain name. Church Y begins using the domain name “ChurchLife.net.” Since its domain name is identical (except for the TLD) to church X’s registered trademark, church X will be able to stop the use of “ChurchLife.net” on the basis of the Anticybersquatting Act.
The Act only protects against “bad faith” use of domain names that contain the name of a registered trademark. It defines “bad faith” by listing several factors for a court to consider, including, but not limited to, the following:
the extent to which the domain name consists of the legal name of the squatter;
the squatter’s prior use, if any, of the domain name in connection with the offering of any goods or services;
the squatter’s intent to divert consumers from the name owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the name, either for commercial gain or with the intent to tarnish or disparage the name, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
the squatter’s offer to transfer, sell, or otherwise assign the domain name to the owner for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of goods or services;
the squatter’s provision of material and misleading false contact information when applying for the registration of the domain name, the squatter’s intentional failure to maintain accurate contact information, or the squatter’s prior conduct indicating a pattern of such conduct;
the squatter’s registration of multiple domain names which he knows are identical or similar to the names of others that are distinctive at the time of registration, or “dilutive” of well-known names or marks of others, without regard to the goods or services of the parties.
The law provides a number of legal remedies for bad faith use of another’s name, including “statutory damages” of up to $100,000 per infringing domain name in the discretion of a court, and attorneys’ fees.
If a church uses a name that is not registered as a trademark, then it cannot use the Act to stop unauthorized use of its name in the domain name of another organization.
Domain name checklist
Here is a checklist of issues to consider when selecting domain names for church websites:
Choose a domain name that is short and easily remembered.
Avoid descriptive or generic domain names, since these have the least possible legal protection (if any).
Do a trademark search (through an attorney, or by using uspto.gov) to be sure that your proposed name does not infringe on the rights of an existing trademark holder.
Obtain registration for your name for every principal extension (.com, .net, .us, .org, .info, and so on), and for principal extensions of similar names. If you cannot obtain a domain name in all principal extensions, you should consider changing to another domain name for which all extensions are available. Registering names for every principal extension of your desired domain name (and similar names) will provide you with significant protection against another person or organization launching a competing or parody site with your domain name and a different extension. Registration of domain names is cheap. Be sure to note annual renewals on your calendar so a registered name does not lapse.