Brands and cybersquatting in the new internet age

Matthew Sammon, of intellectual property services company Marks & Clerk, discusses the advent of generic top-level domains and their relevance to small companies.

These days few small businesses have no online presence. A good website giving at least basic information about your business, its services or products and details on how to purchase your goods or services, if not a platform for actually doing so, is an essential part of every business’s marketing strategy, and it makes complete sense for companies to choose a web address reflecting their brand. Needless to say, most businesses opt for their brand name as part of their web address, as long as somebody else doesn’t already own it.

But things are about to become a whole lot more complicated.

At the moment, if someone else registers a web address using a word or name that you have registered trade mark rights over and they don’t, you can dispute their ownership with ICANN (the Internet Corporation for Assigned Names and Numbers), through its Uniform Domain-Name Dispute Resolution Service.

In 2000, Madonna went through the Uniform Dispute Resolution Service to successfully gain ownership of www.madonna.com, which had been registered by an adult website operator in New York. Smaller businesses with trade mark rights can also use the service, with fees starting from $1,500.

Until recently, web addresses had to fit with the www.insert-word-here.tld format, with the TLD (or top-level domain) normally associated with a country, e.g. co.uk or .fr. Other TLDs are limited, but do exist: for example .net, .org or .gov.

Each TLD is controlled by an ICANN-approved registry. To apply for a .co.uk web address, for example, businesses apply to Nominet, which can then sell you a .co.uk web address. It is down to each registry how they administer the web addresses. Nominet, for example, has maintained a policy of only giving .co.uk address to private organisations, with others, like .gov.uk, .ac.uk and .org.uk reserved for specific organisations.

The current format of web addresses are restrictive, with creative marketers forced to make the best use of geographic TLD as they can. Delicious, the social bookmarks manager, is renowned for its del.icio.us web address. And Tuvalu, the small Pacific island, hit the jackpot when it was given .tv as its geographic TLD and found it could sell web addresses on to media businesses.

With the advent of gTLDS (or generic top-level domains), the internet is beginning to look very different, however. A few years ago, ICANN announced that it was introducing TLDs for any word, in the Roman alphabet or otherwise. No longer restricted to geographic or selected other markers, the new top-level domains will allow web addresses ending in actual words, like .clothing, .cars and even individual brand names, like .tesco.

This kind of branding opportunity is enough to spark any marketer’s imagination: www.generation.easyjet perhaps? Or maybe snap.crackle.pop? The BBC has already applied for .bbc, Amazon has applied for a whole host of domains, including .kindle, .smile and .amazon, and BMW has applied for .mini.

With a $185,000 price tag, however, these individually branded gTLDs were never intended for small businesses.

With .brands out of the question for all but those with seriously deep pockets, gTLDs like .books and .cars offer more affordable opportunities to small businesses. Like the geographical TLDs before them, these domain names are being allocated to ICANN-approved registries, which will sell on individual web addresses, like www.foyles.books or www.ford.car, with prices likely vary considerably.

This host of new branding opportunities also presents a host of new branding risks. The threat of domain name squatters, who take your brand name in bad faith and purchase it as a web address, has only become more acute with the introduction of (potentially) thousands of new TLDs.

In addition to the Uniform Dispute Resolution Service, ICANN has created a specific body to ensure that registered trade mark owners can prevent abusive web address registrations: the Trademark Clearinghouse.

The Trademark Clearinghouse holds a central repository of trade mark information. If your trade mark information is held in the Trademark Clearinghouse, you get to enjoy an exclusive 30-day ‘sunrise period’ whenever a new gTLD is launched, in which only you can secure the corresponding web address matching your trade marked brand. If we saw a .water domain, for example, that would mean that brand owners who had registered with the Trademark Clearinghouse get first refusal on any .drinks web addresses matching their marks – www.evian.water, for example.

When the sunrise period ends, if anyone else applies for a gTLD web address with a term in it matching trade mark information stored in the Trademark Clearinghouse, the applicant is warned that there are trade mark rights over the address they are applying for. If they continue with the registration regardless, the trade mark owner is told and they can take action against the potential squatter.

To benefit from the Trademark Clearinghouse’s services, you have to proactively submit to them your trade mark information. The process is simple and the price is low, as unlike the gTLDs themselves, the Trademark Clearinghouse is intended for businesses of all sizes.

The new look internet 2.0 is going to offer incredible new digital branding opportunities that even small businesses can take advantage of. All businesses need to be aware of the new threats posed by .domain-name-squatters, who will be just as keen to take advantage of gTLDs as you are.

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