Tag Archives: gTLDs

Best of 2013: Yes, Virginia, domain names do matter

First published on July 19, 2013.

Marty Schwimmer at the NYIPLA

Marty Schwimmer at the NYIPLA

That’s one thing I learned at the New York Intellectual Property Law Association’s “Hot Topics in” all kinds of stuff CLE seminar last Wednesday, July 17th, from Marty Schwimmer.

I learned other hot topic stuff from other people, and I will write about them later.  But endorsing the recency effect over the primacy effect, I will start with the talk by the Trademark Blogger.  Marty’s PowerPoint is here.

One of the great things about Marty’s presentation was that, while fundamentally agreeing with all the snarky things I’ve had to say (here and right there in the room before he gave it) about whether domain names are worth caring about any more, he demonstrated why my conclusion — that they don’t matter any more — was trying to prove too much.

Prove too much by what?  By the fact that search (read:  Google) has rendered domain names so relatively unimportant.  By the fact that the courts have finally caught up to the fact that the “initial interest confusion” doctrine, while initially interesting, was a turn onto the wrong exit.  By the fact that the expansion of new gTLD’s, in light of what we’ve learned about how little the last round of new gTLD’s mattered in terms of trademark infringement or even search results, is if anything dilutive of the value of domain names.

Marty did a  great job of addressing all these points, in his inimitable and commanding manner.  The name of his talk was, “New gTLD’s Rollout — Practical Advice for Cost Effective Management” blah blah blah, the title being as long as the presentation, but less enjoyable.  His practical advice:  Tell your clients to register their registered marks with the Trademark Clearinghouse Sunrise  Service, now, before the September deadline, or something-date (which is impossible to find on the website), and probably not to go nuts over the other gTLD business just now.

And yes, domain still do matter, not the way we thought they would, as Marty said, in 1994 (or 1998, when I was litigating about them), but the “dot-com presumption” is still meaningful.

Ah, and that was the other big takeaway from Marty’s talk for me, the trademark-registration skeptic – also something I knew, sure, but wasn’t really articulating clearly even to myself:  Even if you’re really a dog, on the Internet trademark registrations matter a lot.

Why?  Because you are eligible for the Sunrise Service if you’ve got one; you’re not if you don’t.  You can go to Google, to eBay, to all kinds of major players to prevent misuse of your mark, on some level at least, if you’ve got a registration; without one, it’s take-a-number.  Trademark registrations matter on the Internet, and that means that, like domain names — at least dot-com ones — they’ll keep mattering a lot.

Yes, Virginia, domain names do matter

Marty Schwimmer at the NYIPLA

Marty Schwimmer at the NYIPLA

That’s one thing I learned at the New York Intellectual Property Law Association’s “Hot Topics in” all kinds of stuff CLE seminar last Wednesday, July 17th, from Marty Schwimmer.

I learned other hot topic stuff from other people, and I will write about them later.  But endorsing the recency effect over the primacy effect, I will start with the talk by the Trademark Blogger.  Marty’s PowerPoint is here.

One of the great things about Marty’s presentation was that, while fundamentally agreeing with all the snarky things I’ve had to say (here and right there in the room before he gave it) about whether domain names are worth caring about any more, he demonstrated why my conclusion — that they don’t matter any more — was trying to prove too much.

Prove too much by what?  By the fact that search (read:  Google) has rendered domain names so relatively unimportant.  By the fact that the courts have finally caught up to the fact that the “initial interest confusion” doctrine, while initially interesting, was a turn onto the wrong exit.  By the fact that the expansion of new gTLD’s, in light of what we’ve learned about how little the last round of new gTLD’s mattered in terms of trademark infringement or even search results, is if anything dilutive of the value of domain names.

Marty did a  great job of addressing all these points, in his inimitable and commanding manner.  The name of his talk was, “New gTLD’s Rollout — Practical Advice for Cost Effective Management” blah blah blah, the title being as long as the presentation, but less enjoyable.  His practical advice:  Tell your clients to register their registered marks with the Trademark Clearinghouse Sunrise  Service, now, before the September deadline, or something-date (which is impossible to find on the website), and probably not to go nuts over the other gTLD business just now.

And yes, domain still do matter, not the way we thought they would, as Marty said, in 1994 (or 1998, when I was litigating about them), but the “dot-com presumption” is still meaningful.

Ah, and that was the other big takeaway from Marty’s talk for me, the trademark-registration skeptic – also something I knew, sure, but wasn’t really articulating clearly even to myself:  Even if you’re really a dog, on the Internet trademark registrations matter a lot.

Why?  Because you are eligible for the Sunrise Service if you’ve got one; you’re not if you don’t.  You can go to Google, to eBay, to all kinds of major players to prevent misuse of your mark, on some level at least, if you’ve got a registration; without one, it’s take-a-number.  Trademark registrations matter on the Internet, and that means that, like domain names — at least dot-com ones — they’ll keep mattering a lot.

Trademark clearinghouse — Brilliant, right?

Up on the roof

Arbitrary splash of color; notional opportunity for far-fetched “domain” pun waived

Domain-name stuff makes me dizzy.  It could be all those acronyms. Or it could be the troubling way disputes are handled under the UDRP, at least as described by my friend Paul Raynor Keating.  If you do UDRP work all the time, you already know about the Trademark Clearinghouse.  But if you rely on LIKELIHOOD OF CONFUSION® for all your trademark learning — in which case, we have to talk — it’s time to catch up.  This sounds like a pretty good idea, no?:

[O]ver 1400 new generic top-level domains (gTLDs) should become available on the Internet starting [April] 2013. More than half will be open to register domain names. Given this situation, companies must carefully consider how to adapt their digital strategy and prepare for the new landscape.

The Trademark Clearinghouse (TMCH): what is it?

The TMCH is a centralized database of registered trademarks where rights owners can submit their eligible trademarks prior to and during the launch of new gTLDs.

The TMCH has two distinct functions in the new gTLD program: the Sunrise service and the Trademark Claims service. …

The Sunrise service is a period of at least 30 days that must be offered by all new gTLD registries during which eligible trademark owners can register domain names matching their trademarks before domain names are offered to general public. In order to benefit from the system, trademark owners have to provide proof of use of their trademarks.

The Trademark Claims service is a notification service that provides notice to a potential domain name registrant that a domain name registration matches a trademark in the TMCH. Such notification is not blocking but alerts the applicant that it could infringe trademark. In case of litigation, proof of bad faith by the applicant is facilitated as it will not be in a position to allege that it was unaware of the existence of the trademark’s right. If the registration is completed after all, the trademark owner is notified of said registration during at least the first 60 days of the general registration period of any new gTLD.

At least in theory, it sounds smart, provide not only monitoring but a way to systematically address some of the ridiculous games that end up getting played concerning a domain registrant’s knowledge and bad faith in UDRP proceedings.  As to the Sunrise service,  you can just see the land-rush possibilities afoot here, but the official take on this is the service is being tailored narrowly:

These two services only apply to identical matches that is to say domain names, which consist of complete and identical textual elements of the trademark. The matching rules are strict. Only spaces, punctuations or other IDN-impermissible characters (!, +, =) may be omitted or replaced by hyphens. The signs @ and & may be replaced by a hyphen, omitted or translated into the applicable language(s) corresponding to the language of the trademark’s right jurisdiction.

It’s never really all that simple, though, is it?   Read More…

Defensive domaining

Spring evening in Herald Square

Gratuitous picture

Kevin Murphy, editor of Domainincite, has a pretty interesting teaser for an analysis — subscription required (maybe he’ll shoot me one, though?) — of how the world’s biggest brands use new gTLDs:

DomainIncite PRO is excited to reveal the results of the domain name industry’s first in-depth study into how the world’s biggest brands use new generic top-level domains.

In March and April 2012, we surveyed the domain name ownership and usage patterns of the world’s 100 most-valuable brands — representing over $1.2 trillion in brand value, according to Interbrand — in six gTLDs introduced since 2001.

As well as confirming the long-held belief that brand owners see little value in defensive registrations — many not even choosing to benefit from residual traffic — the survey also revealed which brands are more likely to develop their sites, which are most vulnerable to cybersquatting, and which appear to care the least about enforcing their brands.

We also examined how “cybersquatters” use the domain names they register, with some surprising results.

Privacy/proxy registration is not nearly as prevalent as many believe, our study found, and a significant portion of registrants have made no effort to monetize the domains they own that match famous brand names.

I wish I had time to get on top of this stuff.  Just from the teaser, however, I’m perceiving one thing that I had predicted is, kind of, coming to pass:  Domain names are, in fact, becoming passé.

I don’t assume Kevin puts it that way in his report.  After all, he’s got this domaining blog; it’s like his life’s work, and that of many others; and just ask my friend Paul Keating — there’s plenty going in UDRP-land, governed as it is by a non-law interpreted by non-courts  (not like our oh-so-with-it real courts!).  Even I play the domain game from time to time.

But reading between the lines of the above, it seems that domain names are of some relevance, yes, but mainly as a part of a far more complex formula that determines how people get places on the Internet and what they “get” once they get there.