Maintaining Control of Your Brand Among 1,200 New gTLDs

Good entrepreneurs know that a company must protect its trade marks and its brand from the outset.  The primary means of doing so is to register trade marks in each of the territories in which the company does or intends to do business, but the ubiquitous nature of the Internet and its minimal barriers to entry make protecting a mark online seem like a much more difficult task.  And while ICANN’s efforts to continuously add to the growing list of over 1,000 generic top-level domains (the string to the right of the last dot in a domain name, commonly referred to as “new gTLDs”), has significantly expanded the domain name marketplace, it has exponentially increased the opportunities for cybersquatting and for consumer confusion.  All of this might make a cash-strapped start-up despair that it will ever be able to protect its brand online.

But with a bit of research, some judicious allocation of resources and a commitment to take action where it is warranted, every company can successfully navigate the world of new gTLDs.

Here are some cost-effective ways companies can obtain their new gTLD domain names and protect their registrations.

Obtaining your domain names

Some companies ask whether they should embark upon a program of “defensive registrations”, registering all of their trade marks in every new gTLD solely in order to prevent others from doing so.  For the vast majority of companies, that is neither a good nor a necessary use of resources. Most new gTLD’s are inapplicable to your company and unlikely to be seized by cybersquatters or lead to any real consumer misdirection. For example, the .cpa gTLD added in September 2019 is not likely relevant to any company that is not an accounting firm. Many other gTLDs are specifically intended to be contextually relevant to the content provided on their corresponding websites; for example, that the registrants are part of the entertainment industry (.film), are photographers (.photo), belong to a certain religious group, or that they operate from a particular location. Cybersquatters will still be able to register misspellings of defensively-registered domain names, and the annual cost to renew such registrations (at least $10 per year per domain name) makes this strategy prohibitively expensive for most companies.

The better option for most companies is to review the list of available gTLDs and identify a smaller number of domains on which to focus resources.  A full list of gTLDs open for registration is available on the ICANN website and is updated frequently so should be checked periodically.  The key is to ensure that companies register their most important brands in only the most relevant gTLDs, either because they are likely to be used or because they present the greatest risk of confusion and cybersquatting.  By adopting this more targeted approach, brand owners leave a greater portion of their resources for other brand development initiatives, including responding to infringements if and when they occur.

Protecting your domain names

As noted above, registering a brand in one gTLD does not stop cybersquatters from registering that brand in a different gTLD, or even registering a misspelling of that brand in the same gTLD:  no strategy is anywhere near 100% effective and some measure of infringement is, unfortunately, unavoidable.  The best response to any such actions will depend on your own circumstances, but it will typically involve a combination of the following proactive and responsive actions.

• Assess the likely impact of the registration on your brand: Some registrations will cause more harm than others:  it is not uncommon for two or more independent entities to use the same brand name for different goods and services or in different jurisdictions; and there are many examples of obscure gTLDs that are unlikely to divert traffic away from the legitimate brand owner and whose registrations will simply lapse in due course.  So it is important to determine which potentially infringing domain names will take priority in your enforcement activities:  sometimes the best course of action is to be patient and choose your battles.

• Take action against registrations that damage your brand: Where a registration offers counterfeit goods or is otherwise engaged in a bad faith use of a trade mark, action should be taken as quickly as possible.  In addition to litigation, brand owners can take action to suspend, cancel or transfer domain names using one of two streamlined procedures known as the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the Uniform Rapid Suspension System (“URS”).  Although the UDRP and the URS have slightly different criteria, burdens of proof, and outcomes, broadly speaking they allow brand owners to take action in respect of a domain name that is identical or confusingly similar to the brand owner’s mark, where the registrant has no rights or legitimate interest in the domain name and has registered and used it in bad faith.  Further details about the URS and the UDRP can be found in our article Protecting Your Brand Online with URS and UDRP  So that you can move quickly against infringers of all stripes, it is essential to keep your trade mark records in good order and readily available.

• Be prepared to defend a third party’s claim against your domain names: Just because one entity has rights in a domain name does not mean that another entity will not also have a legitimate interest in the same domain name.  That can happen for a variety of reasons, whether because of a dispute over ownership of a trade mark or because the parties have the same mark for the same good or services but in different territories:  every domain name registrant must accept the risk that they may be required to defend their registrations either in court or via a UDRP or URS proceeding.  The key, again, is to be prepared:  for UDRP and URS proceedings in particular, brand owners should be ready to demonstrate at short notice that they have rights and legitimate interests in their domain name, usually by demonstrating that it corresponds to one of their trade marks, and that they have not registered or used it in bad faith, usually by showing that it is being used for a genuine offering of goods and services.  Again, the key is to be prepared and to keep accurate trade mark records.

Fortunately for start-ups, successfully navigating the online world does not depend on throwing a lot of money at a problem.  What it does require is diligent record keeping, thoughtful planning, and a realistic commitment to taking decisive action when it is necessary.  With those three straightforward actions, start-ups can embrace the opportunities afforded by ICANN’s new gTLD program.