Domain Names and Branding – What’s in a (Domain) Name?

In the internet age, a good domain name is a crucial part of any business’s branding strategy.

In a previous post on this blog directed at domain name owners, I covered the importance of domain names and identified some common domain scams. But what about new businesses that are just starting their branding? Ideal “.com” domain names can be in short supply these days. What is an entrepreneur to do?

Avoiding the Domain Scam

As reported by Lori Wiese-Parks only a few months ago on this blog, the number of misleading solicitations and notices relating to trademark applications appears to be on the rise. Unfortunately, these scams connected to the trademark registration process are not the only brand-related schemes targeting entrepreneurs: scammers also like to send misleading messages regarding domains. 

The selection and purchase of a domain name is a vital step in getting a business off the ground and often one of the first steps in the branding process. Entrepreneurs generally seek out short, easy-to-remember domain names that incorporate their brand in combination with a standard top level domain (TLD), such as “.com,” or a TLD common in the industry, such as “.io” for technology companies. Domains can even become a shorthand for a business and its products — as discussed in an earlier post regarding BOOKING.COM; sometimes a domain can become so distinctive that the domain itself is recognized as a trademark.

Domains allow businesses to advertise to their customers, sell goods and services, and communicate. As such, a business’s domain and the website at that domain is one of its most vital links to the public. However, just registering a domain is not enough — domains must be connected to services such as web hosting and periodically renewed. Even short-term disruptions to the website or domain of a business can have a significant impact. Particularly disastrous is if a business fails to renew its domain and is forced to move its online presence to a different domain. (This specific issue is best avoided by making sure that the domain is set to auto-renew with the domain registrar or by registering the domain for a period longer than one year.) 

The extreme importance of registering and maintaining a domain opens the door for scammers to take advantage of entrepreneurs. Scammers often send misleading messages regarding a domain in the knowledge that the business owner might not be intimately familiar with the domain registration process and might act without thinking if they receive a notice implying that their domain is at risk. Fortunately, these scams are often easy to detect and dismiss. 

Some People Try to Find Love by Casting a Wide Net; Dating Apps Use the Same Strategy to Get Your Business

Many people recently celebrated Valentine’s Day with that special someone. Others celebrated Singles Awareness Day on February 15. And, although only a few days have passed since Valentine’s Day, it’s very likely there are some recently single folks out there who were not single on February 14. For those single people, after you’ve had a good dose of some classic country heartbreak hits (try Hank Williams – “I’m So Lonesome I Could Cry” or Miranda Lambert – “Kerosene”) to see you through these bleak times, take heart and read on. This article is here to help you understand the lay of the land for dating apps, so you’ll be ready for February 14, 2022.

Numerous iconic brands that surround us on a daily basis are owned by a relatively small number of large conglomerates. The auto industry is a great example. Alfa Romeo, Chrysler, Dodge, Fiat, Jeep and Maserati are just some of the brands owned by Stellantis N.V. Volkswagen AG owns Audi, Bentley, Bugatti, Lamborghini, Porsche and Volkswagen, to name a few. There are large players with huge brand portfolios that dominate the alcohol industry. ABInBev’s massive list of brands includes Goose Island, Michelob and Modelo. The consumer goods industry is no different. Brands that Proctor & Gamble has an ownership interest in include Charmin, Febreze and Tide. Unilever plc counts Dove, Lipton and Ben & Jerry’s as some of the recognizable names under its roof.

Just as these automobile, alcohol and consumer goods conglomerates have a wide spectrum of offerings, so do dating apps. Dating apps have been designed to be inclusive and cover a wide swath of users’ backgrounds. As parent companies acquire dating apps for their brand ownership portfolios, they increase their reach and are able to capture more users. As seen in the examples below, many of the commonly known dating apps are just one of many in a portfolio owned by a parent company. However, there are some key players that are notable exceptions to having a portfolio of many brands. One such exception is Bumble, which was listed on the Nasdaq exchange on February 11, 2021 and was valued at $13 billion.

Registration of “Generic.com” Trademarks after Booking.com

One of the most critical aspects of starting a new enterprise, or growing an existing business, is
establishing and protecting a strong brand. For most modern entrepreneurs, this means not only selecting a name and logo but also acquiring a domain name. Some online businesses have taken the approach of using a domain that incorporates a generic term for the sort of goods or services provided by that business and using that domain not only for their website but also as their primary brand for advertising and sales purposes (for example, shoes.com, hotels.com, mattress.com). While these domains can be valuable from a marketing perspective, it can be difficult to protect these domains from a trademark perspective. This is a particular challenge for businesses that have come to use a domain as their primary brand, because such “generic.com” terms are often denied federal registration as trademarks. 

In June 2020, the U.S. Supreme Court issued a decision in United States Patent and Trademark Office v. Booking.com B.V. stating that trademarks that combine a generic term with a top-level domain such as “.com” should not automatically be considered generic overall. The United States Patent and Trademark Office’s (USPTO) had rejected Booking.com’s applications to register the mark BOOKING.COM for online hotel-reservation services on the basis that these terms are generic and unregistrable by default. However, the Supreme Court found that, if consumers recognize an applicant’s “generic.com” mark as specifically identifying that applicant as the source of the goods or services, the mark may be registrable. 

Suckstobeyou.com

Trademark owners will be thrilled to know that for a short time (until May 29) they have a priority right to register their brands with the generic top-level domain (gTLD) “.sucks.”

Top level domains are the suffixes added to a domain name/address.  Generic gTLDs  were intended to be available for general registration by any person or organization within a particular group (“restricted”) and included the very well-known gTLDs “.com,” “.org,” “.net,” etc.  As the qualification restrictions were never enforced, these gTLDs have been accepted as unrestricted, and I believe are currently officially recognized as such.

So should you register your brands with the “.sucks” gTLD before someone else does?

Certainly a lot of companies will do so, and probably famous entertainers, politicians, and athletes.  Some of these brand buyers have suggested that they want to host their own site welcoming criticism of their products or services.  (News flash— “.sucks” doesn’t exactly engender a thoughtful or serious discussion.  Stick to a “critics’ corner” or “tell us what you think” page on Facebook.  “.sucks” just seems to be asking for the worst. ) Most “owner” registrants simply want to keep the offensive domain name out of the hands of others who might provide an easy forum for bad behavior.  

The price is high—at least for a domain name registration—and will warrant some cost-benefit analysis for most average businesses and individuals.  “.sucks” is pretty much a dead giveaway that the site is not complimentary, and it should not confuse anyone into thinking that the brand owner is trashing itself, or its business or products.  At the same time, if anyone truly wants to debase, degrade, defame, embarrass or humiliate me, or post unauthorized photographs, or rant about what a terrible person I am, they can still register loriparkssucks.com (or .net, .org, or .info), or blast me on Facebook, Twitter, Instagram, or any of the other social media sites—probably at a much lower cost.

Many will register their brands because they can.  Not surprisingly, early registrations came in for Yahoo, several of the major Apple marks, a handful of banks and financial institutions…and Kevin Spacey.  (Who would say bad things about Kevin Spacey?)  I would have expected to see a boatload of politicians, particularly those running for president, but maybe they haven’t yet done enough fundraising.

The timing and pricing of the options for “.sucks” are complicated, but Sheldon Klein, one of our Washington, D.C., partners, has done all the hard work and explained it in this IP Alert published March 20.

TEN THINGS TO LOOK FORWARD TO IN 2013

As we start the New Year, I offer some personal predictions and questions to ponder in the areas of intellectual property, social media, and privacy law. Not as exciting as what will happen in Season 3 of Downton Abbey, but I do expect lots of surprises and interesting developments in the months ahead.

1. Trade Secret Litigation

On December 28, President Obama signed into law the Theft of Trade Secrets Clarification Act of 2012. This new law expands the scope and protection of trade secrets to cover products or services “intended for use” in interstate or foreign commerce. The number of trade secret cases and related litigation is likely to increase as a result.

2. Patent Applications Overwhelm Patent office

The America Invents Act (AIA) will result in an unprecedented number of patent applications, including a large number of provisional applications that are filed to take advantage of the change from first to invent to first to file. Stay tuned to find out if the United States Patent and Trademark Office can handle the demand.

3. Patent Trolls Punished

Defendants in patent cases will take advantage of new administrative procedures made available under the AIA to challenge patents outside of the courts. Hope to see more targeted legislation forthcoming to put a damper on non-practicing entities or so-called  "Patent Trolls".

4. We Should Find Out if Human Genes and Abstract Ideas are Patentable

The United States Supreme Court will answer the question of whether human genes are patentable. It will also clarify when a computer implemented “abstract idea” is eligible for patent protection.

5. New Federal Privacy and Security Laws

Will cyber-attacks or significant data breaches cause major damage and disruption resulting in new federal legislation or other government actions to prevent such activity?

6. gTLD’s Become Popular 

Forget the dot.coms. E-commerce will look a lot different as the new generic top level domains (gTLDs) come into use and bring with them new enforcement challenges for owners of brand names. It remains to be seen whether consumers will like and use them.

7. Pinterest Remains Pink

Pinterest's user base (currently around 80% female) will remain relatively testosterone-free. It won’t stop others, like Gray Plant Mooty client Thrill On, from finding cool ways to adapt the Pinterest idea for people who were born with a Y chromosome.

8. States Enact Privacy Laws

Mores states will follow the lead of California (and six others) to enact laws such as those prohibiting employers from requesting (or requiring) that employees or applicants provide log-in information for Facebook or other personal social media accounts.

9. Right of Publicity

A person may have the right to prevent others from commercially using their identity, voice, name or likeness without permission. More attention will be given to the Right of Publicity and how it might be violated on social media sites. One example is “twitter jacking,” a practice where people create twitter accounts posing as celebrities. Facebook users discovered to their surprise that when they “liked” certain products or services their profile pictures were used to promote those goods to their friends. A class-action suit was filed against Facebook that resulted in a settlement of $20 million. We will likely see more cases this year invoking the Right of Publicity.

10. The World Does Not End   While the newest claim by my close Mayan friends is that the world will now end on December 31 2013, I predict that the world will not end and we will still be here discussing most of the above issues for years to come—and looking forward to Season 4 of Downton Abbey.

Of Donuts and Domain Names

Readers of entreVIEW may recall that I wasn’t very enthusiastic about the expansion of generic top level domain names (gTLDs) authorized by ICANN (Internet Corporation for Assigned Names and Numbers).  So when ICANN published the first list of applications on “Reveal Day,” last Wednesday (June 13, 2012), I didn’t drop everything to pore over the list.

Some did, and advised that there were 1930 total applications, but no real surprises, nor any particularly interesting applications. (Somewhere I seem to recall a prediction that there would be maybe 500 applications in the first round, so the sheer volume intrigued me).  These early commentators also pronounced Google and Amazon as two of the top applicants with approximately 100 and 75 applications, respectively, and indicated that about one-third of the applications were filed by organizations protecting one or more significant brands, while several common terms were the subject of multiple applications. No surprises.

When I finally took a few minutes to look at the list, I admit that I didn’t find anything that “surprised” me, but I did find a number of things that were nevertheless interesting.

While there were multiple applications for such gTLDs as APP, ART, HOME, SHOP, BLOG, and INC, there was only one each for marks such as ATTORNEY, BEER, and COMPANY. (I expected single applications for famous trademarks – NIKE, AOL, GOOGLE, DUPONT – but BEER?) Amazon filed its applications through its European corporation. United TLD Holdco Ltd. filed applications for both DEMOCRAT and REPUBLICAN; there were no competing applications. Google and Uniregistry Corp were the only applicants for LOL, and Google and Microsoft the only applicants for DOCS. Travelers filed applications for TRAVELERS, TRAVELERSINSURANCE, and REDUMBRELLA. The Gap filed an application for PIPERLIME. (How had I never heard of that?)  One company filed applications for ALLFINANZBERATER and ALLFINANZBERATUNG. Really?

What the first reports missed were the 307 applications filed by Donuts, Inc.  This is understandable as each application was filed in the name of a separate holding company, but it is quickly apparent that there is some connection because of the shared contact person, Daniel Schindler.

A simple Google® search of that name and “TLD” discloses Donuts, Inc. as the source of the numerous applications, and identifies Donuts, Inc. as a start-up that raised over $100 million from venture capital firms and private equity institutional investors (reported to have access to billions) for the purpose of acquiring and operating numerous gTLDs. With over $56 million invested on the applications alone ($185,000 filing fee per application), Donuts, Inc. will be looking at further significant costs in completing the review process, which will involve at least some competition with others filing for some of the same gTLDs (e.g.,  APP, BLOG, BOOK, CARS, etc.), as well as fending off challenges under prescribed opposition procedures.

Since an applicant is evaluated on its financial and technical capability to operate a registry, and is expected to be in operation within a year after final approval, Donuts has to have spent some serious cash developing a plan for each application, and must be committed to spending further funds to pursue the registrations, negotiate conflicts, defend oppositions, and implement a registry for each application that is ultimately approved. I sure would like to see the business plan that shows when Donuts, Inc. first expects to make a profit.

Will New Top-Level Domains Provide Opportunity, Heartache, or a Big Nothing?

Once again, ICANN (Internet Corporation for Assigned Names and Numbers), the nonprofit organization responsible for, among other things, maintaining registries of Internet protocol identifiers and management of top-level domain names, or TLDs (e.g., .com, .org., .gov.), has authorized the expansion of TLDs. Apparently, it has decided that the currently available 22 generic TLDs approved for general use, plus a bunch of country code TLDs, are not enough, or maybe it has determined that there is simply no reason to limit the number of TLDs.

In its most recent action, the ICANN Board of Directors voted to open all the gates to allow registration of virtually anything as a TLD. The expectation is that companies will apply to register their company names or major brands, while others will apply to register generic names, such as .law, .hospital, or .park, with the intent to charge others to use such TLDs. The one-time fee for the application is $185,000 ($5,000 payable at the time the application is requested and the balance upon submission of the application), plus an annual fee of $25,000. Initial applications will be accepted from January 12, 2012 through April 12, 2012, with subsequent application periods to be announced.

For a good beach or cabin read, check out the new gTLD Applicant Guidebook. No need to hurry. It’s still a draft and, I believe, under revision for the fourth or fifth time. The current version is 352 pages. I’ve only skimmed the document (guess I haven’t had enough down time at the cabin lately), but noticed that the estimated evaluation period for the first batch of applications is somewhere between nine and twenty- two months! Also, additional fees and costs might be required during the course of the evaluation.

As with domain name registrations, the gTLDs will be granted on a first-come, first-served basis, but only if the first in line has completed the application process before a subsequent application is filed. Where there are two or more pending applications for the same gTLD, the subject applications will be assigned points in various categories and the one with the most points will win. If there is a tie, the gTLD will be granted to the highest bidder. The owner of a company name or brand represented by the gTLD is not guaranteed to win, but will be entitled to some preferential treatment.

Any interested party can file an objection to any application during the evaluation process for an as-yet unknown fee.

I’m surprised at the number of people who think there will be a rush to register these new gTLDS. Does McDonalds really need a personal TLD to identify its official site or prevent confusion with others? Who even searches using TLDs? Is this a golden opportunity for budding entrepreneurs to become registrars for .health, .law, or .doctors? Before jumping on this, consider how often you see the use of some of the lesser known TLDS that are currently available: .aero, .pro., .name. Will we lose competitive ground if we don’t register gpmlaw.law in addition to gpmlaw.com? Is this just another opportunity for the scam artists to inundate me with warnings about others trying to register my name or brand as a TLD?

And while percolating on the now unlimited options one has for TLDs, remember that .xxx will now be available for individual monopolization as ICANN recently approved this suffix as a TLD .xxx for use by providers of adult content sites. Policies have not yet been finalized for implementing this new TLD, but it appears certain that trademark owners outside the adult entertainment industry will be given an initial opportunity to file a blocking application to prevent others from registering their name or brand with the .xxx TLD during a “sunrise” period. This period is currently scheduled to begin in September. While the fee for filing a blocking application is expected to be less than $1,000, costs could mount up if a company has several brands, or tries to cover all variations of a company name or brand.

Before you panic about the protection of your name or mark, think about a third party’s use of the .xxx TLD. Will a client or prospective client really not know if we are gpmlaw.com or gpmlaw.xxx? Will I accidentally end up at gap.xxx when looking for that cute Baby Gap® outfit? Will I believe that Pillsbury has finally gotten the Pillsbury Doughboy® to pose nude at Pillsbury.xxx?*

Once again, there is likely to be much ado about nothing, but that’s not to say that both established businesses and budding entrepreneurs should not be thinking about these things and whether or not there is a real concern to be addressed or opportunity to pursue.

*Before you get too excited, a fully-clothed Doughboy® only wears a scarf and a chef’s hat.