Domain Names, Trademarks and Your Brand

Naming names

To create and manage domain names we define the relevant terms.

Note that while the entire system is globalized—domain names can be in Chinese or Arabic, for example—I’ll stick to the English language Internet. To avoid confusion, I’ll use the convention “dot-com”, for example, to refer to a Top-Level Domain (TLD,) instead of “.com.”

A TLD is the rightmost extension of a domain name. Dot-com, dot-org, dot-edu and dot-net are the most familiar TLDs, often referred to as legacy TLDs. Originally they were meant to convey areas of focus (commercial, non-profit, educational and network, respectively,) these distinctions aren’t enforced.

gTLD refers to generic Top-Level Domain. Although technically this includes the legacy TLDs, the term is commonly used to refer to the new extensions ICANN, the Internet Corporation for Assigned Names and Numbers, has added in the past 2 years. These include: dot-club, dot-movie and dot-marketing!

There are ccTLDs. These are two-letter extensions like dot-us and dot-ch (Switzerland.) They’re used for the various countries around the world.  ccTLDs are based on the pre-Internet system of country codes.

Other TLDs are for governments, corporations and other entities, for example: dot-nyc, dot-ibm and dot-mormon. Some TLDs have restrictions on who can register names with that extension. You need a verifiable New York City street address to register a dot-nyc domain; but not for a dot-vegas.

There are now hundreds of TLDs available and more are added every month. Here’s ICANN’s complete list of TLDs.

Actionable Marketing Tips:

• Most companies that provide domain name registration also provide DNS management. Some also offer webhosting and email services. Save money with bundled offers.
• Need Privacy? Domain registration information is public. Therefore it’s available to spammers. Most registrars offer domain name registration by proxy. This provides privacy but it means someone else owns your domain name and rents it back to you for a yearly fee.

Be the master of your own domain

Here’s how you create and establish rights to a name for you online activities. The “activity” can serve any purpose, not necessarily a business. You don’t need to incorporate to secure ownership or rights to use a name.

Let’s say you want to run a small online shop to sell collectable items that you’ll call: Great Awesome Gazooks. Where do you start?

1. Google it! Search for “Gazooks” to see how the name is used on the Internet. Search other sources too, such as: Amazon, Yahoo, Facebook, LinkedIn and Twitter.
2. Registered Trademarks. Registered trademark rights are stronger than domain name rights. Make sure that none of your domain names step on an existing trademark. The United States Patent and Trademark Office (USPTO) provides the Trademark Electronic Search System (TESS).
3. WHOIS Database. Chick which domain names are available. I like to use Whois.net since it shows the full WHOIS record. It makes suggestions for alternative names if the domain name you searched on is already taken.

Here’s Tess’s response to my “Gazooks” query:

Good News! “Gazook”, the singular form, was once registered for a dice game. It’s now listed as DEAD & ABANDONED 🙂 .

A USPTO regular filing application costs $325 per business class. It’s worth the money because a trademark provides protection for any Gazooks domain names I may choose.

Note: It’s very difficult to trademark a common dictionary word or place name (ask Amazon.) For that reason, “Gazooks” is a better choice than “Gadzooks.”

A WHOIS search shows that Gazooks.com is not available 🙁 .

However there are hundreds of other gTLDs suggested. I narrow the list down to 10 options (1 year prices shown):

gazooks.tech ($4.99),
gazooks.forsale ($32.99),
gazooks.gallery ($21.99),
gazooks.gifts ($33.99),
gazooks.market ($33.99),
gazooks.nyc ($29.99),
gazooks.rocks ($14.99),
gazooks.sale ($27.99),
gazooks.works ($33.99),
gazooks.zone ($33.99)

I’m thinking of registering gazooks.forsale as the primary domain name for web and email. This will let me setup custom landing pages with URLs such as http://awesome.gazooks.forsale/ and create an email address such as shop@gazooks.forsale .

I might also register gazooks.market and gazooks.gifts so I can have URLs such as http://mobile.gazooks.market/ and http://great.gazooks.gifts/ .  Fun, huh?

Registering a domain name is a simple shopping cart operation. You must provide your personal or corporate name and contact information including a verifiable email address.

While there are many companies that provide registration services, not all registrars provide registrations for every TLD. You may have to shop around for the name you want. I use Dotster for most of my domain name registrations. United Domains and Register.com are other registrars I’ve used for clients.

Actionable Marketing Tips:

• Use TESS. It’s a little old and difficult to use but has plenty of help. [ http://www.uspto.gov/trademarks-application-process/search-trademark-database ]
• Apply for a trademark where appropriate. While you can make a trademark application yourself on USPTO.GOV, There are no guarantees it’ll be accepted. Check with a lawyer to understand your options.
• Although browsers generally default to the dot-com extension to complete a URL, Google does not penalize not-com TLDs in their ranking algorithm.
• Keep track of new gTLD opportunities by subscribing to Calzone. They maintain a calendar of TLD rollouts. You can follow them on Twitter at: @CalzoneCalendar.

Trademarks and your brand: Protect your intellectual property

With hundreds of TLDs available and more coming each month, how can you protect your investment in the names you’ve already chosen? Suppose someone comes along and registers gazooks.woot when that gTLD becomes available. What can you do?

Here’s where having a trademark becomes essential. However, that in itself is not enough. You must also register the trademark with the Trademark Clearinghouse (TMCH) the designated agency (by ICANN) for sorting through these conflicts.

When a new gTLD is rolled out, a “sunrise” period begins. During this time (minimum 30 days,) trademark holders registered with the TMCH can register domain names matching their exact trademarks before the names are available to the general public.

Others can pre-register the domain name during the sunrise period but there’s no guarantee they’ll get it. If a domain name hasn’t been registered by the end of its sunrise period, pre-registrations are then submitted subject to the policies of each registrar. It’s usually a first-come-first-served basis.

Following the Sunrise period, a 60 day “Trademark Claims” period begins. During this time, anyone who attempts to register a domain name matching a mark recorded in the TMCH database receives notification that the registration is subject to challenge. If the notified party registers the domain name, a notice is sent to the trademark holder informing them of the registration.

Note: the TMCH doesn’t resolve disputes. It’s strictly a clearinghouse for information linking trademarks and domain names. Each registrar must state its policy for identifying and resolving disputes. When you register a domain name, you’re signing a contract agreeing to follow those policies.

It’s up to you to initiate an action with ICANN if you think someone has registered a domain name that infringes upon your intellectual property.

If you’ve registered your trademark with the TMCH, then during the trademark claims period for a gTLD, you can submit a Uniform Rapid Suspension (URS) request to void and take over any new registration that exactly matches your mark. A URS is fairly inexpensive (around $150.)

After the trademark claims period ends, your only option is to submit a Uniform Domain Name Dispute Resolution (UDRP) filing. UDRPs are resolved by binding arbitration, can be costly ($1,300 for one arbitrator or $2,600 for a panel of three) and there’s no guarantee you’ll win.

To be successful, your URS or URDP filing must:

1. Establish your legitimate rights to the name. Registration with the USPTO, TMCH and/or other authorities does this if you don’t have an existing history using the name.
2. Demonstrate the harm for which you seek relief. For example: confusion in the minds of the public leading to a loss of sales and/or reputation.
3. Provide evidence of “bad faith.”  For example, if the registrant sends you an email offering to sell you the domain name at a premium or threatens to sell it to a competitor—that’s bad faith!

Filing a UDRP can be time consuming and expensive. Consider consulting a lawyer. Often, a letter from an attorney’s office notifying the registrant of the intent to file a UDRP will lead to a good settlement.

Actionable Marketing Tips:

• Register domain names in your own name. Don’t let a third-party advertising agency or web developer own your name.
• Read your registrar’s terms and conditions for registering a domain name. It’s a binding contract.
• Maintain a spreadsheet of domain names you own. Include expiration dates, registrars, webhosting and email accounts. Don’t rely on your registrar(s) to keep you informed.
• Consider using a service (such as DomainSkate) to monitor the domain name space and notify you of close matches that could infringe your rights. (Disclosure: they’re a former client.)

Larry Aronson is the President of Larry Aronson Associates and the Actionable Marketing Guide’s webmaster.

PS: While we’ve tried to keep it simple, we recommend sharing this article with your technology and legal teams to get their input.