First of all, what is a domain name? In the simplest term, a domain name is a unique URL or address of a particular website that defines itself from every other website on the World Wide Web.
And we know, it is incredibly difficult at the present to get a good domain name. And we also know how important it is to get a good domain name for your online venture. Whether it is the business’ main site, a targeted microsite, or a “category killer” premium domain name, pithy, descriptive names have the power to make a company stand out in searches, boost its position in organic search results, and establish a reputation as a reliable source of information and a leader in a certain category.
Domain name availability has become more and more scant over the years. Many single word domain names have been scooped up which it makes it more and more difficult to find a domain name that you like and is available. Many of our customers often find themselves in a limbo when trying to search for a domain name to use when launching their business website. And for domain investors, finding a domain like the one that the Chinese Android devices startup Xiaomi paid for (Mi.com) as they prepare to ramp up their global expansion plans is becoming elusive as seeing a white unicorn.
It worth bearing in mind that Xiaomi spent $3.6 million to purchase the domain according to Li Wanqiang, co-founder and VP of Xiaomi. He said that they paid that much because the “new domain is simpler and more accessible to an international audience” and also gives a more succinct meaning to the “Mi” brand, which stands for Mobile Internet.
So how can you also tap into this secret gold mine?
Well, the good news is that out of the 1,930 applications for new domain extensions that was filed for various types of extensions, ranging from the truly generic (.love, .shop, .app), to the brand-specific (.goog, .bmw, .aol) and the geo-specific (.nyc, .boston, .paris), the Internet Corporation of Assigned Names and Numbers (“ICANN”) has made for general availability, dozens of these new gTLDs.
With this growth in name, domain name disputes will increase and many business owners will find themselves in legal battles to defend their turf. In particular, trade mark owners will likely be keen to ensure that domain name registrants do not register their trade marks as domain names. Any potential trade mark infringement will likely be an issue at the 2LD level and, as a matter of law, would have to be addressed directly with the registrant of the domain name. While trade mark owners still have the ordinary enforcement options of commencing trade mark infringement proceedings (where the mark is a registered trade mark), passing off and misleading or deceptive conduct, this can be difficult against domain name registrants because:
- registrants may be located overseas, making litigation practically difficult;
- trade mark owners may not have the requisite trade mark rights in that overseas jurisdiction (e.g. no trade mark registration and/or no goodwill); and
- it is not settled law that registering or using a trade mark as part of a domain name constitutes “use” of that trade mark in breach of the trade mark owner’s rights.
Take for an instance the case of Canyon Bicycles who recently recovered a cybersquatted domain name that was registered seven seconds after it became publicly available.
The dispute, involving “canyon.bike”, is the first to be resolved under the Uniform Domain Name Dispute Resolution Policy (UDRP) in the new gTLD space.
German company Canyon sells racing, mountain and triathlon bikes, with agents in ten countries and subsidiaries in six countries including the Netherlands, where the respondent is based. Although he registered “canyon.bike” under a privacy service, the respondent was discovered to be Rob van Eck. The cyclist and web designer registered it on February 5 at 16:00:07 UTC, seven seconds after the .bike gTLD opened for public registration.
The domain points to a website parking page that features sponsored listings, including one entitled “Mountainbikes”.
So it is extremely important to take the time and understand the new domain name dispute rules to ensure you do not find yourself on the wrong end of the law.
Contrary to popular belief “cybersquatting” where someone buys and holds domains of an existing business and trade-mark with the sole intention of selling them for a profit is often illegal.
Where someone registers a domain name that is similar to the name or trade-mark of an existing business, often the trade-mark holder has a legal remedy, particularly where it is clear that:
- The domain holder has only registered the domain to fool people into thinking that the registrant is associated with that business, an act called passing off; or
- The domain holder bought the domain for the purpose of selling it to a person who has a legitimate business interest in the name.
Here are some stats from the years past:
- UDRP cases rose 4.3% year on year to 2,884, covering a record 5,082 domain names
- 88% of complaints in 2012 were upheld, compared to the 85% average, indicating brands are getting better at choosing when and how to file effective UDRP actions
- Among the brands that filed UDRP cases with WIPO in 2012 were Apple, Dyson, IKEA, IBM, Intel, LEGO, McDonald’s, Pfizer, Royal Bank of Scotland, and many others
Among the Top 10 countries for UDRP complainants, in 2012 compared to 2011:
- Italy and Germany increased the number of cases filed by 70% and 63% respectively
- USA saw complainant case filings decline 14%, for a total of 798 cases in 2012
- Liechtenstein saw cases skyrocket 411%, from 18 to 92
Among the Top 10 countries for UDRP respondents:
- USA remained the greatest source of squatters, but saw no year on year change in volume
- China’s domain dispute level has been growing at almost 47% making it a bigger hotspot for cybersquatting
- UK saw an 8% uptick in squatters, with 192 UDRP cases filed
- France, India, Canada, Australia, Spain, and Netherlands has been seeing a decrease in cases
The Gongshow Domain Name Dispute
A perfect example is the Canadian hockey apparel company Gongshow Gear and the disputed domain www.gongshow.com. The domain had lawfully belonged, for more than 10 years, to a blogger whose last name was Gong. In November 2012, the domain was sold in a closed auction, however Gongshow Gear was not invited to bid. Instead, the new purchaser of the domain, an individual located in Dubai, tried to flip the domain and sell it to Gongshow Gear for $18,000.
Instead of paying for the domain, Gongshow filed a complaint with the Internet Corporation for Assigned Names and Numbers, or ICANN, the international body that regulates website addresses and won the domain without paying a cent. To do so, Gongshow Gear had to prove three main items under the ICANN rules:
- That the domain was confusingly similar to Gongshow’s trademark;
- That the owner of the name did not have a legitimate interest in it (i.e. he or she was cybersquatting); and
- The owner was using the domain in bad faith.
Gongshow, who had been building their brand in Canada and around the world for the previous 11 years was successful on each point.
There are different proceedings for resolving a dispute over an American domain name (.com, .us etc.) and a Canadian domain name (.ca). For an American domain name, dispute resolution is governed by the Uniform Domain-Name Dispute Resolution Policy (UDRP) an arm of ICANN. The Canadian Internet Registration Authority (CIRA) has its own Domain Name Dispute Resolution Policy (“the CDRP”) for Canadian domain names. Both organizations use a private dispute resolution setting where disputes are usually carried out in writing and adjudicated by one or three arbitrators.
Hostragon offers a pre-registration period for some of the new TLD’s. We recommend it as a crucial initial step because when you register your trade marks with the TMCH, you benefit from receiving advanced warning of applications for domain names and future gTLDs that infringe that particular trade mark rights. Registering a trade mark with TMCH is a relatively inexpensive process especially when weighed against the obvious benefits of brand protection.
You can take a look at some of our new gTLDs and trade-mark your name during the registration process in order to give yourself a better claim to a domain name if ever contested.
Looking ahead, trade mark owners should develop strategies to cross check business names, trade marks (registered and unregistered) and the like against future gTLD applications to pre-empt the risk of a gTLD passing through the formal objection period unnoticed
How To Get A Good Domain Name And Stay Out Of Trouble At The Same Time
Learn about domain name and site association. When choosing the right domain name you should always keep it and your website’s name as close to each other as possible. You do not want to confuse visitors because your domain name seems to be totally different from your website name, especially if you are running an e-commerce website.
Choose a name that is not too long and is not too confusing so that visitors have a hard time remembering it. In most situations, the shorter your domain name is, the better off you will be. This is because people will remember the URL and they will continue to visit your site in the future. Also always try to avoid using acronyms, dashes or other symbols as they may also confuse potential visitors for the first time.
When dealing with most websites and finding the perfect domain name you should always keep in mind that it’s not what you like, but what you have researched and know that your visitors/customers will like. Just because you like the name or think it sounds good does not mean everyone else is going to like it.
Always have a couple of back ups. When you start to register your domain name it would be wise to have a few different names written down just in-case your first choice is already taken. A lot of times they usually are, so the more unique your domain name is, the better chance you will have. Also keep in mind there are other domain designations than just (.com).
Domain names can be really long or really short (1 – 67 characters). In general, it is far better to choose a domain name that is short in length. The shorter your domain name, the easier it will be for people remember. Remembering a domain name is very important from a marketability perspective.
Bear in mind that unless a visitor reaches your site through a bookmark or a link from another site, they have typed in your domain name. Most people on the internet are terrible typists and misspell words constantly. If your domain name is easy to misspell, you should think about alternate domain names to purchase.
Also consider domain names that may not include the name of your company, but rather what your company provides.
Though not advisable, when selecting a domain name, you have the option of including hyphens as part of the name. Hyphens help because it allows you to clearly separate multiple words in a domain name, making it less likely that a person will accidentally misspell the name.
There are many top level domain names available today including .com, .net, .org, and .biz. In most cases, the more unusual the top level domain, the more available domain names are available. However, the .com top level domain is far and away the most commonly used domain on the internet, driven by the fact that it was the first domain extension put to use commercially and has received incredible media attention. If you cannot lay your hands on a .com domain name, look for a .net domain name, which is the second most commercially popular domain name extension.
Be very careful not to register domain names that include trademarked names. Although internet domain name law disputes are tricky and have few cases in existence, the risk of a legal battle is not a risk worth taking. Even if you believe your domain name is untouchable by a business that has trademarked a name, do not take the chance: the cost of litigation is extremely high and unless you have deep pockets you will not likely have the resources to defend yourself in a court of law. Even stay away from domain names in which part of the name is trademarked: the risks are the same.
All search engines and directories are different. Each has a unique process for being part of the results or directory listing and each has a different way of sorting and listing domain names. Search engines and directories are the most important on-line marketing channel, so consider how your domain name choice affects site placement before you register the domain.