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John B.
Farmer

 

Lawrence E. Laubscher, Jr.

 

Ian D. Titley

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Will the New Domain Names Matter to Businesses?

Monday, August 22nd, 2011

Will the new domain names be a big deal, a big headache or just a big yawn?

In case you haven’t heard, the organization that oversees the administration and development of all Internet domain names – the Internet Corporation for Assigned Names and Numbers – recently announced final plans to process applications to launch new generic top-level domain names.

A generic top-level domain name – a “gTLD” in Netspeak – is the part of the domain name to the right of the last dot. The famous ones are .com, .net and .org.

But there already are many other, newer gTLD’s, and many of them get little use. For example, when was the last time you visited a website using a domain name ending in .museum? For me, the answer is “never.” In fact, there isn’t even a website at either www.art.museum or www.history.museum.

Nevertheless, soon anyone will have the chance to apply to launch and operate a new gTLD. I could apply to launch the .triathlete gTLD, and could then sell domain names, such as pokey.triathlete.

Doing so will cost you an application fee of $185,000 and your total start-up expenses probably will run from $500,000 to $2 million, so you’d better pick a gTLD in which you can sell lots of domain name registrations.

Major brand owners are concerned. They think new gTLD’s will be just one more space where they will have to defend their brand names – their trademarks – from being pirated or mimicked.

They complain that the turf they must defend online from such attacks keeps expanding – at first a few gTLD’s (e.g., .com, .net), then other gTLD’s of lower popularity (e.g., .mobi), then MySpace (now just BandSpace?), then Facebook, then Twitter, then LinkedIn. Now they might face a potentially infinite number of gTLD’s that could pose problems.

For example, a new gTLD might pirate a famous brand. Someone other than Coca-Cola could try to register .coke as a new gTLD.

That’s shouldn’t be a big problem. The start-up costs are too high to attract cyberpirates, and owners of famous brands will have plenty of power to watch and defend their interests.

Another problem is that each new gTLD represents yet another area where someone can squat on someone else’s trademark by registering a domain name within the gTLD that is too similar that trademark. Domain names in these new gTLD’s probably will go on sale around mid-2013.

Right now, savvy businesses preemptively register close domain name variations of their brands in all popular gTLD’s. For example, if you sell a line of swimming accessories called SHARKSWIM, you might register SharkSwim.com, SharkSwims.com, SharksSwim.com, SharkSwim.net, SharkSwim.org, and so forth, to keep a bad guy from getting them.

But do you preemptively register SharkSwim.jobs or SharkSwim.coop? Probably not, because those gTLD’s aren’t popular. Likewise, a new gTLD won’t be popular unless it has a hook, like a tie-in to a popular social networking platform.

There also will be waysfor brand owners to defend themselves against cyberpiracy in domain name registrations in these new gTLD’s.

For example, owners of federally registered trademarks will be allowed to record their trademarks in a “trademark clearinghouse.” Doing so will enable them to get notified when someone tries to register a domain name that effectively matches their trademark and will cause a warning to be sent to anyone trying to register such a domain name.

If you are a business owner, the key things you should consider doing are:

• Remember to monitor the new gTLD applications when they are published (around April 2012) to see if any pose problems for your brands. Keep checking periodically for new gTLD applications.

• Keep abreast of whether any of these new gTLD’s are becoming the next hot thing, such as being the platform for the next popular social networking scene. If one starts to heat up, pre-emptively register your brand names as domain names in the new gTLD space.

• A U.S. trademark registration for each of your key brands (company names, product names, service names, featured taglines) will be your best weapon for doing battle with someone trying to register or use a similar domain name in any new gTLD space. Get this registration now. An after-the-fact effort won’t help much if at all.

For me, I’ll keep an eye out for any interesting new gTLD’s, like .Simpsons or .Swimming. Otherwise, I’ll just keep it old school in dotcom land.

By John B. Farmer
Published in the Richmond Times-Dispatch
© 2011 Leading-Edge Law Group, PLC. All rights reserved.