Want a domain that’s not available? Here’s what to do

(Editor’s note: Curtis Smolar is a partner at Ropers Majeski Kohn & Bentley. He submitted this column to VentureBeat.)

A reader asks: I have a recognizable brand, but when I went online to get the domain name, it was already taken.  What can I do?

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Answer: This is as much a marketing question as a legal question. There are, however, five ways that you can work through this problem. Let’s take a look:

Use another domain level – There are a host of domain levels beyond “.com,” including geographically specific domain levels such as Italy (“.it”); Germany (“.de”); and Great Britain (“.uk”).

So ask yourself: What do you really need? Are you selling a product or service in a particular country?  Does it matter whether you have the “.com” versus the “.net” domain level?

It is commonly believed in the U.S. that the “.com” domain level is the most valuable.  The reason for this is usually that “.com”is the standard and the level that people look at first.  But this may be archaic thinking.  Back in the dotcom boom, it was clear that the “.com” domain level reigned supreme, but in today’s world of social media and Google searching, this may no longer be the case .

If you have a “.co.uk” or “.it” or other international domain it is probably sufficient.  That said, make sure that you are actually doing business in that geographical area and you are not infringing on another company’s trademark.

There has also been talk of creating a new top level domain that is the name of trademark or the company.  For example “.coke.”  But that has not happened yet.

Buy search engine keywords that direct to your site (regardless of its domain name) – Although you may not be able to get the domain name you want, you may be able to work around this problem through an online advertising campaign.  For example, Google allows you the opportunity to purchase adwords or keywords that describe your goods and services.

In the past, there was an extreme danger in buying adwords, especially if they were those of a competitor.  Ever since the decision in Network Automation, Inc. v. Advanced Systems Concepts, Inc., the Ninth Circuit has opened the door for buying adwords of a competitor.  How far reaching this case may be is still a question, though, so you should exercise caution if you decide to go this route – and get a lawyer involved at the very beginning.

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Buy the domain name – Instead of just accepting your fate, you may want to reach out to the current owner of the domain and make an offer to buy it from them. There is an established marketplace for domain names and there are websites that will allow you to price the domain name you want to buy.

That said, be careful searching domain names because some websites, such as NameJet, publish searched names, which may increase the price in the long run.

Back order the domain name – There are a few services that actually allow you to back order domain names as they become available.  For example, NameJet, mentioned above, will allow you to reserve a domain name if it becomes available and will also act as an agent to buy it.

Take it by force – There is a legal framework relating to trademarks and service marks, the ownership of trade names in general, and (specifically) what domain names you may properly procure and capitalize on without infringing upon another person’s or business’s legal rights. So, if someone owns a domain on a word or term on which you have a legally registered trademark, you may be able to obtain it legally.

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Put simply: Owning the domain does not give someone any rights to the name. It may, in fact, give you a door allowing you to take ownership of the URL.

This can be done by using the ICANN (Internet Corporation for Assigned Names and Numbers ) dispute procedures or Trademark law through the courts.  Note that this can be time consuming, expensive and you will need to get a knowledgeable attorney involved.

Just remember that winning the race to registration is not end of the process.

Startup owners: Got a legal question about your business? Submit it in the comments below or email Curtis directly. It could end up in an upcoming “Ask the Attorney” column.

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Disclaimer: This “Ask the Attorney” post discusses general legal issues, but it does not constitute legal advice in any respect.  No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  VentureBeat, the author and the author’s firm expressly disclaim all liability in respect of any actions taken or not taken based on any contents of this post.