Trademark Protected Brands are NOT registering defensively in gTLDs

A recent survey of over 1000 registered trademark brands owned by Fortune 100 companies show that Brands aren't defensively registering domain names as was originally predicted. Antony Van Couvering discusses the results of the survey in regards to defensive registration and cybersquatting with Damien Allen on today's program.

• Brands registered as trademarks prioritize where they are going to make defensive registrations

• In dot.com registration, 100% of these brands are registered trademarks. In dot.org, 75%, dot.biz is 65% and dot.travel only 10% were registered.

• In the new open TLDs since dot.biz and dot.info were introduced in 2001, the aggregate is only 29%. Both in brands and any cybersquatting.
•  Trademark registration is they most important thing you can do to protect your company name and brand on-line.

Announcer: Welcome to Trademark Law Radio sponsored by Traverse Trademark Law, internet lawyers specializing in Trademark Infringement, Trademark Licensing and Trademark Registration. Now, here’s your host, Damien Allen.

Damien Allen: Good afternoon and welcome to Trademark Law Radio. My name is Damien Allen and joining me today on the phone is Antony Van Couvering of Minds and Machines. Good afternoon, Antony. Welcome to the program.

 

Antony Van Couvering: Hi, Damien. How are you?

Damien Allen: I’m fine. Hope you’re doing well, sir? 

Antony Van Couvering: Yes!

 

Damien Allen: You recently did a survey showing that brands don’t register defensively in the new generic top level domains, and in that survey of 1,043 brands owned by the Fortune 100, what were the findings?

 

Antony Van Couvering: Well, the study was really to look at…they do register in them, it’s just to what extent do they register in them, and we have been in the new gTLD program dealing with a lot of claims about how the costs would be astronomical and that brands will be forced to register themselves and all kinds of different new gTLDs and we just didn’t really see that that would be the case because we felt that brands would register where they do business or in obvious gTLDs for them, for instance, Nike might want to register in sports or shoes but not barber shops. So, we decided to have a look at the Fortune 100 and see what their patterns of registration were in the new generic top level domains that have been introduced since 2001 and we only looked in those that are open, meaning that it is pretty easy to get a registration. And we didn’t just look at whether the brands had registered their names, whether anyone had registered their names. So, our study really shows not only defensive registrations, but also any cybersquatting. And what we found was that in dot.com 100% of these brands are registered and that as you go down the list, you get fewer and fewer. By the time you get to dot.org, it’s only 75%, dot.biz is 65% and dot.travel only 10% were registered. So, in the new open TLDs since dot.biz and dot.info were introduced in 2001, the aggregate is only 29%. And that’s both brands and any cybersquatting. We didn’t check who the registrant was but what it does show us is that brands prioritize where they are going to make defensive registrations and that outside of dot.com and possibly dot.net, there isn’t really a great deal of cybersquatting, which is something we found in another study we did about where UDRPs are filed, which generic top level domains. 

 

Damien Allen: Now is there a greater percentage of cybersquatting done within the dot.com and dot.net than one would normally think would be there?

 

Antony Van Couvering: Well, we don’t know what normal is, I mean, my point of view, you know, any cybersquatting is not something you want and shouldn’t be seen as normal but dot.com is clearly where it all takes place. And that’s because we think that there just isn’t any type-in traffic outside of dot.com. So, if somebody makes a mistake, a fat finger typo or they can’t spell properly, they’re usually going to put dot.com at the end. So that’s where cybersquatters are registering confusingly similar domain names and because there’s no type-in traffic outside of that, we find that cybersquatting is very, very low. And typically, it’s done where someone has decided to register the name in more than one top level domain, so do dot.com, .net and .org.

 

Damien Allen: Now there’s specific patterns that a trademark holder would use when registering their TDLs? 

 

Antony Van Couvering: Well, in a way there is. There are patterns that we see according to the actual company. So, some take different approaches. Virtually all of them will register their names in dot.com and then some will register all their names in a couple of others and ignore the rest, and some will take their top brand and register it across all top level domains and their secondary marks don’t get the same kind of protection. So, it really depends on the company, and it depends on the mark too. For instance, if you’ve got a mark that is also a generic word like “Best” (Best Buy has a mark for Best), they’ll defend that heavily because it might be registered by somebody else with a good reason to register it. But if you have a mark, for instance, here’s one for Procter and Gamble, I think, I got a whole bunch of them, called Avril Lavigne Fragrances. Well, you know that’s very long and no one is going to be able to say that, oh yeah, that’s the name of my daughter or something like that. So, that doesn’t get the same kind of protection at all. So, it depends on the company and the mark and probably also what kind of experience they’ve had with cybersquatting. 

 

Damien Allen: Now in the form of defensive registration, why would someone want to set up a defensive registration and what would be involved in doing that?

 

Antony Van Couvering: What a defensive registration means is that it’s a domain registration by a company usually of their trademark or a name that is close to their trademark, and their registering it defensively means they don’t really want to use it, they’re not going to build a website there. For email, their registering it defensively because that’s the surest, best and probably cheapest way to make sure that somebody else doesn’t register it and build a site that infringes on their mark. 

 

Damien Allen: Well, Antony, what should the trademark holders worry about when they’re registering a new gTLD?

 

Antony Van Couvering: There’s two questions there. One is, should they get their own gTLD and that is I think is a marketing consideration rather than a defensive consideration. I think that if you own a mark like United or Delta, where there are multiple mark holders and it’s a common generic work, then you might consider registering the name as gTLD. When you get into registering defensively at the second level, for instance, yourbrand.newTLD, then you really should be looking at not Oh My God, the sky is falling; I’m going to have to register everywhere because we’ve already seen that that doesn’t happen. Brands don’t spend money foolishly. They register names where they do business or think they might want to do business or where they think there are significant risks of cybersquatting. So, with regard to cybersquatting, I think that’s only going to happen in the really sort of big blockbuster new top level domains. These might be, for instance, dot.web or dot.blog or dot.photo or something like that. Many of the new top level domain applications I have seen are quite niche, they are looking at a specific market, for instance, there’s a dot.horse project announced and if I were selling Nike, for instance, might be interested in dot.horse because they might sell polo equipment, I don’t happen to know if they do, but if they did, that might interest them. But brands should really be looking at registering in those top level domains that have something to do with the business that they are in. And they are unlikely to run into cybersquatting in others for the same reasons that they wouldn’t want to register them there, cybersquatters won’t be doing it either. Cybersquatters really depend on type-in traffic and if there isn’t any, then it’s really little value to them and they’ll have a hard time selling it back to the brand which is the other scam that they run. So, that’s what a data suggests looking at it historically is that brands have gotten smarter and are no longer looking at the sky is falling scenario but rather are picking and choosing where they register and we’re also seeing by the same study that cybersquatters really haven’t been interested in the new gTLDs either. I think that’s the quick takeaway. 

 

Damien Allen: Any closing thoughts, Antony, before we leave?

 

Antony Van Couvering: Well, I’d like to say that as the new gTLD process rolls on, we’ve seen a lot of anecdotal information from both sides of the story, you know, from people who just say, oh, well, new gTLDs are going to be great and on the trademark holders’ side, oh my god, they’re going to be a disaster. And actually the truth probably lies somewhere in between. There definitely will be some abuse. I think that goes without saying but we think that the approach to new gTLDs ought to be a lot more data driven. And we can tell a lot about what’s going to happen by what has already happened in analogous situations. So, my closing thought is that we should stop dealing in scare stories and begin to look at the data to come up with realistic scenarios that provide us with the information we need to actually do something constructive about it. 

 

Damien Allen: Well, thank you very much for joining us today, Antony.

 

Antony Van Couvering: Thank you.

 

Damien Allen: We’ve been speaking with Antony Van Couvering of Minds and Machines. You’ve been listening to Trademark Law Radio. My name is Damien Allen. Everybody have a great afternoon.

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Comments

[Rashid Mahmood]

There have been plenty of innovations that have been failures, and new gTLDs might be one of them. But to argue that people won’t try something new on the Internet is to deny the history of the past 20 years.

[Tom Barrett]

As an ICANN registrar, our experience supports Antony's comments.

It is understandable that the Sponsored TLD's, like .travel, .coop do not have many defensive registrations.

Surprisingly, TLD's that are open to a wider range of users also do not have many defensive registrations.

For example, .pro, was initially very restricted but has since relaxed their requirements. As a result, although the TLD is now available to anyone with a professional license, there are very few defensive registrations.

best regards,

Tom Barrett
EnCirca.com