New generic top-level domains (new gTLDs) are ostensibly designed to promote innovation, brand equity, and competition in the domain name space, but the program is proving costly for many big brands. In previous posts we’ve explored the problems these new extensions pose for branding and security professionals, as well as the pros and cons of restricted gTLDs. Today we will examine three infringement cases that illustrate some of these challenges.
The new gTLD program has resulted in the increased registration of major brand names, which is causing a lot of concern for trademark owners. There have been a number of Uniform Rapid Suspension System (URS) and Uniform Domain-Name Dispute-Resolution Policy (UDRP) cases filed in response. While most brands have registered their trademarks in the original top-level extensions, such as .com, .net, and .org, the introduction of more than 1,000 new gTLDs means thousands of potential new trademark infringement cases.
Trademark infringement involving TLDs occurs when someone unrelated to a brand registers a domain name that includes that brand’s moniker. This is often referred to as cybersquatting – when someone who doesn’t have rights to use a name attempts to profit from someone else’s trademark.
Let’s take a look at three current cases involving .EMAIL, .SUCKS, and .PORN.
One company was involved in a number of controversial trademark infringement cases is Yoyo.Email Ltd., which has registered more than 4,000 .EMAIL domain names using popular brand names, such as 7eleven.email, dunkindonuts.email, Geico.email, and Budlight.email. Forty-nine UDRP and URS cases have been brought against YoYo.Email, with the company losing all but two of the claims.
As a result, Yoyo.Email took action in one of its cases – versus PlayInnovation – by filing suit seeking declaratory judgment. PlayInnovation originally won a URS against YoYo.Email for the domain name PlayInnovation.email. Ultimately, the two companies entered into an agreement that Yoyo.Email will no doubt use to its advantage in future cases.
The .SUCKS extension, operated by Vox Populi Registry Inc., is marketed as a new gTLD “designed to help consumers find their voices and allow companies to find the value in criticism.” Understandably, brands are unhappy with this extension because of the negative connotations associated with the name, along with the fact that they feel bullied into paying the $2,499 registration fee to secure the safety of their trademark during the Sunrise period; otherwise, it will be available for registration for the general public starting at around $10.
Trademark owners who don’t fork over the $2,500 run the risk of having it registered by a third party. This has angered trademark owners, who have petitioned ICANN for action, calling the pricing structure “predatory, coercive and exploitive.”
ICANN asked the FTC and Canada’s Office of Consumer Affairs to determine whether Vox Populi’s pricing plan was illegal. Federal Trade Commission Chairwoman Edith Ramirez said her agency would not get involved in this controversy, citing previous warnings to ICANN about permitting this domain name. Canada’s Deputy Minister of Industry, John Knubley, said that Canadian law includes trademark protections, and those laws apply to new gTLDs. He encouraged trademark owners to use the laws to protect their rights. Vox Populi has acknowledged that its pricing plan is different from other gTLDs, but will not make any changes until action is taken to nullify their contract with ICANN, or a country finds its actions illegal.
.PORN is another new gTLD commanding attention from businesses and celebrities. There is a justified worry from public figures and organizations that their names or brands will be registered in this space, even if the actual websites do not feature them.
To control your brand image, it is often necessary to register and retain control of domain names you have no intention of using, and .PORN may be one of the best examples. Celebrities like Taylor Swift have gotten ahead of the issue by registering their name or brand in this extension.
Each new gTLD presents a different concern for trademark owners based on industry and customer association. While those concerned about cybersquatters or affiliation with certain new gTLDs should register all relevant domain names as part of their brand strategy, we understand it is not financially feasible for most companies to do this. This requires monitoring domain name registrations and registering brands in relevant extensions that are most likely to cause consumer confusion or dilute your brand.
Organizations should continue to monitor new gTLDs as they launch, and should register their trademarks with ICANN’s Trademark Clearinghouse (TMCH) to protect their rights. Brand owners MUST weigh the cost of registering their domain names in certain extensions against the potential harm not doing so can bring, whether it is from the public or competitors.
Author: Camille Stewart
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