The Changing Landscape of Brand Protection in 2014

As 2014 draws to a close, I look back on the monumental changes that have happened in the domain name space and in brand protection over the past year.

At this time last year, the general public was still limited to registering in top-level domains such as .com, .net, and .info, as well as a handful of country-code domains.

Now, there’s been an explosion of new extensions, and we can register in new .GENERIC TLDs such as .guru, .clothing, .plumbing, and, one of my personal favorites, .bike.  Of course, there are also many .BRAND TLDs now such as .BMW, .AXA, and .BLOOMBERG, just to name a few, but these will mostly be closed and only available to their respective trademark owners.

As expected, this expansion of domain possibilities has brought with it an expansion in the scope of cybersquatting, which brands have had to consider in their brand protection efforts.

Brand Protection through Dispute Resolution

We’ve already seen hundreds of UDRP and URS cases pursuing infringements in new TLDs.  Examples include:

• StateFarm.xyz (still pending)
• Inifinity.today (suspended)
• IKEA.trade (ordered transferred)
• Branson.guru (claim denied)

Brand Protection through Defensive Registration

Many brand owners have felt the need to jump into the more popular new TLDs – not because they have big plans for them, but merely as a defensive move to prevent them from falling into the hands of cybersquatters.

Brand Protection at a Steep Cost

Defensive registration hasn’t been painless for brand owners.  Many have found that the words making up their brands have been priced higher than usual as “premium” domains.

Registries can do this where a brand is capable of having generic meaning in addition to functioning as a trademark (e.g., “apple” in relation to fruit vs. high tech gadgets).  Given the alternative of even more expensive litigation with questionable chances for success, brand owners have opted to pay these premium prices and so the practice has gone on quietly.

More Options and Regulations

Another odd facet of new gTLDs is that not all registrars offer all domains.  In some cases (e.g., .moscow) there are a limited number of registrars offering the domain and so brand owners may not be able to benefit from the relationship they’ve developed with their favored registrar and may find themselves agreeing to be bound by the laws of countries with which they’re not all that familiar.

Contending with Geographic Restrictions

Finally, some new gTLDs have geographic restrictions and brand owners without an office or address in that location may find themselves shut out of the domain.  The much-promoted .nyc domain is a prime example where only registrants having an address within the five boroughs of New York City are eligible to own these domains.  Brand owners without such an address may either need to be creative in finding a local agent to hold the domain for them or may simply be faced with using the URS process to shut down the infringing [brand].nyc when it inevitably gets registered by an ambitious local entrepreneur (as has already happened in a number of instances).

So it seems that, in addition to policing their marks online, brand owners must also deal with a patchwork of issues when seeking to defensively register domains.  Don’t be surprised if, in the new year, this leads to some responsibility for these tasks being removed from catch-all personnel in IT or legal departments and the creation of new in-house specialist positions titled “Domain Name Manager” or the like.