Category: TLDs/New gTLDs

Act 3: Depression

Five years ago, the number of domain name extensions was alright: less than 500. It was still possible to register its trademark and its company’s name in the extension of its choice and to act against fraudulent deposits. Attacks were unusual and you defended yourselves when smart little ones made contentious deposits. Some extensions only accepted subdomains registrations, such as Australia and the United Kingdom. Impossible to save at the root and impossible to register without having any rights: .CO.UK for companies, .AC.UK for the academic world,…

But that was before.

Then arrived several generic extensions and if the rare extensions created, caused only few problems (.MUSEUM, .MOBI, .AERO,…), this was not the case for the thousand new delegated extensions following the new gTLD program, opened on January 12, 2012. Although brands have filed .BRAND or .COMPANY to protect their territories, many extensions were open and the registration race allowed smart little ones to create big damage. The registration of BLOOMBERG.MARKET and VINCI.GROUP are two particularly well-known examples.

Today, the management of domain names is managed by people dedicated to this activity, mostly within marketing, legal and IT departments.

But what do you have to do? Register your brand in all TLDs? Spend an important amount in domain name retrieval procedures? An in-between?

Interesting alternatives are born from the opening of the new gTLDs:

• Create a closed extension with subdomains to find the identification-trust link, such as the .FX project I presented a few days ago to NetWare2017 ;
• Create your own extension: some already do this well, like .BNPPARIBAS or .LECLERC ;
• Help the end user and this is the project of the Nameshield’s CEO, through Brandsays, a browser extension.

If the brands continue to rightfully submit domain names, they will also develop other means of access, such as SEO or social networks.

While INTA, in its recent study, highlighted impressive figures regarding defensive actions, to get the right answer, you have to ask the right question. We will see in the fourth and last episode of this summer saga, how to understand the .BRAND strategy.

Read act 1: Denial (and Anger)

Read act 2: Expression

Read act 4: Reconstruction

Act 2: Expression

We left off on the time when the brands did not feel the Internet revolution, the techniques evolving and the registered domain names. (Read act 1: Denial (and anger))

The example of McDonald’s is interesting. In 1994, Wired, an American magazine created a year earlier, communicates about the case of mcdonalds.com. Joshua Quittner, a journalist at Newsday, contacted McDonald’s and asked if they would be interested in registering mcdonalds.com. There was little to no answer. He registers the name, contacts McDonald’s which does not answer. Then he publishes his article on Wired, putting the contact address ronald@mcdonalds.com.

McDonald’s complains and Quittner asks for a donation for charities: it will be 3500USD for the computer equipment of a school in New York.

In analogy, we can remember when a Russian worker asked for a gift from Vladimir Putin, who could not refuse in front to the camera. Putin offered him his watch worth a year’s salary.

The virulent attacks of trademarks are legion in order to recover the domain names from little jokers, some of them could be part of the company, such was the case for mtv.com.

Brands federate among themselves, contact ICANN to develop simplified procedures, even if, according to the famous trademark dilemna, the American organization had known the risk of cybersquatting for a long time.

On the side of lawyers, training courses are launched on each side of the Atlantic and the UDRP, SYRELI, URS and others, are created in order to defend the digital territories.

France, known for a long time as a country supporter of trademarks, will not remain passive and is today, the second country in the world in the disputes resolutions concerning domain names.

Thus, in the virtual territory, and in contrast to the reality, the police is financed by trademarks. The holders of a territory, similar to countries, are doing nothing or almost nothing: recovering a .Fr can be possible using a SYRELI procedure, while for our friends from the outside of Rhine, no alternative procedure exists: to apply for its .DE, it is the court or nothing.

Nevertheless, an economy of defense of brands is organized and thus, an ecosystem is developed.

Everything seems to be going well, until the arrival of the new extensions, as called in the field, the first round…

Read act 3: Depression

Act 1: Denial (and Anger)

The brand, a forbidden territory. Everything is played out by attacks, complaints, courts. A ruthless world. Since the 23rd of June 1857 and the creation of the first system of trademarks by France, it is possible to benefit from an exclusive right of use for a term on different applications. Otherwise the law is coming. The arrival of the Internet will shake up this foundation.

If one remembers the Milka conflict with Kraft foods, which led to the famous opposition between Milka Budimir, a seamstress in Bourg-lès-Valence, and the American giant Kraft Foods about the domain name milka.fr, we can keep in mind the case of many domain names holders who succeeded in winning attacks against those bigger than them.

The expression of David vs Goliath is illustrated in France with leclerc.fr, domain name registered by a fan of the Leclerc tank. In spite of an attempt at recovery of SYRELI type, the tradesmen never succeeded in obtaining this famous domain name. For posterity, the justification of the individual will be retained in his argument: “… in life there are not only shopping centers and consumption, France is above all, a country of history, a strong history of which we can be proud!”

In the United States, the case of Nissan Computers is interesting. The little known IT company was registered after the name of its owner, Uzi Nissan. The eponymous Japanese company Nissan Motors evidently pouted at the deposit of nissan.com and tried to recover the domain name in question. Despite an incessant media campaign and numerous attacks, today nissan.com remains the property of Nissan Computers. Nissan Motors now uses nissanusa.com for its US business. In this case, the Nissan.com website only reflects Nissan Computers’ computer sales activity. We can instead find a strong attack against Nissan Motors. A bad buzz in action!

What can we keep in mind through these two experiences? A relatively interesting bone marrow: the domain name, this intangible asset representing the image of a company, has not been sufficiently monitored by multinationals.