Over the past few months we have seen the gradual launch of a range of new gTLD’s (generic Top Level Domains). Some are industry or geographic specific, but others are creating more concern.
US pop star Taylor Swift has recently received a lot of press, not only about her efforts to trade mark song lyrics including “this sick beat”, but also following her very swift and savvy move of buying the domains TaylorSwift.porn and TaylorSwift.adult. Sensibly she has realised that in the hands of the wrong party these domains could result in serious damage to her professional reputation. By owning the domains herself she forestalls any opportunistic registration and later, a more expensive and damaging legal battle.
The potential for misuse of these gTLD’s, along with .sucks, have commentators advising that they are potentially the most critical for businesses to purchase as a defensive move.
But what are the potential problems and what strategy should businesses adopt? And why does this problem even exist?
To consider these issues we perhaps need to look back at the history of gTLD’s. At the start of the dot com boom there was something of frenzy over domain names, with some businesses falling prey to cyber squatters who thought they could make some money by registering well known brand names as domain names and then offering them for sale at hugely inflated prices. Fortunately newly introduced provisions in UK trade mark law came to the rescue, along with common law passing off provisions, providing the owners of registered trade marks with a reputation protection against those attempting to trade off or take unfair advantage of that reputation. But the situation also left many brand owners feeling that they had to have extensive portfolios of domain name registrations to protect themselves, as far as possible, against such situations arising.
This became less of a problem as the initial frenzy over domain names died down, with the problems shifting to more sophisticated online infringement methods. The occasional introduction of a new gTLD would create a flurry of concern, but by now a new body had been set up, ICANN, at the behest of the US Administration, controlling the gTLD structure and its administration. They had recognised that brand owners needed some protection and methods of recourse. Sunrise periods to register ahead of everyone else for registered trade mark owners were introduced, along with dispute resolution procedures to ensure that disputes over domain names could be cost effectively addressed.
But a continued rapid growth in the use of the Internet and the demand for ever-more available domain names led to a decision to open up the possibility for a raft of new gTLD’s. This resulted in nearly 2000 applications, and many of these are now coming on line.
We have already seen in Wales the launch of .wales and .cymru, and London has seen the launch of .london, all of which have a clear draw for businesses operating in those geographical areas to shout about their more specific location. Others are a draw for specific sectors, such as .pharmacy or .cafe.
The greatest concern has been over those, which if linked with a business’ brand, may not reflect well. With brands being some of the most valuable assets for many businesses the risk is immense. Apple consistently appears at the top of the brand value rankings, along with other major brand owners such as Google, Disney and Coca Cola, all of whom could have some serious damage occur if their brands are misused. But this is not just a problem for big brands. For most businesses their brand represents their reputation, and sends very specific messages to their customers, whether consumer or business, about what the expectations will be for value and quality of their products or services.
And as demonstrated by the actions of Taylor Swift, it is not just businesses that can have their reputation harmed by wrongful association with certain domains. Having your brand wrongly associated with .porn or .adult could have serious implications for your reputation.
The concern now coming to the forefront is the issue of the .sucks domain which has just been launched and is currently in its sunrise period. Whilst the operators of the domain extol the virtues of this as a customer vocal point so that businesses can address concerns and complaints, the precise name of the domain, .sucks, does not necessarily portray the image of a customer focused platform. At the same time the operators are under fire for requesting exceptionally high fees for the privilege of registration, meaning that defensive registration by brand owners is not necessarily a straightforward decision.
Whilst the row over .sucks continues, the fact remains that brand owners cannot sit back and assume that new gTLD’s pose no threat. The sunrise periods are there to offer a first bite of the cherry for brand owners, but unless trade marks have been pre-registered through the Trademark Clearing House, a system operated by Deloitte for ICANN to verify trade marks owners rights to use the sunrise periods, brand owners are, along with everyone else, in a first come first served race to register their desired domain names. Another longer term advantage of registering with the Trademark Clearing House is an ongoing notification service they offer, identifying potentially infringing domain name registrations.
So what should brand owners do? Well clearly it is not sensible to try and register a domain name for every brand for every new gTLD, and in the same way that a particular gTLD may not have any commercial desirability for a business, it’s attractiveness to those who hope to have some hold over a brand owner may also be limited. A strategic approach is advisable.
- Firstly, if you have not already done so, register the existence of key trade mark registrations through the Trademark Clearing House. Although many gTLD’s have already launched, there are still a lot to come on line and the ongoing notification service they offer for identical matches to your registrations could be invaluable.
- Secondly, review the list of new gTLD’s and their current status on the ICANN website. Are there any that offer a valuable commercial link, such as your specialist sector or geographical location? Note when the sunrise periods are due to start, or the general release date, and contact your domain name provider to ensure that your application for registration is placed early.
- Thirdly, consider a commercial watching service so that, should an abusive registration get through, you are able to pick it up and swiftly utilise the dispute resolution procedures put in place.
Nowadays an essential part of any brand owners protection strategy needs to be careful monitoring of online activity , coupled with a strategy of what action should be taken – and quickly – in the event that an issue is found. Staff education of the types of brand misuses on the internet, along with an internal notification procedure also ensure that instances of misuse are quickly brought to the attention of the appointed co-ordinator in the business. Swift action will limit reputational and financial damage.