An interesting point of view on new gTLD’s, trademarks and .com registrants was published today by Cybrands.com
Basically the author of the post is claiming that owning a .com can be better protection against potentially infringing new gTLD domain names than a trademark.
He calls it the .com firewall:
“In computing terms, firewall has many definitions.”
In domaining terms, what I’m referring to is the practice of registering the .com version of a domain name which can effectively quash incentive for anyone to register any other version of that particular name.”
The fact is that there are several practical advantages and inherent rights protections that are in play that are built into the fabric of owning and using a .com domain name for business purposes. :
Is owning the .com version (and using the name in commerce) of a particular domain name a rights protection strategy unto itself that you could employ. ”
Even possibly equal to or better than a registered trademark?
First of all, as far as your intellectual property rights are concerned. If you own a .com domain name and you use it in commerce you have very likely established common law trademark rights to that name.
According the the USPTO “businesses automatically receive common law trademark rights in the normal course of commerce.”
Common law trademarks are something that I like to call a “usemarks.”
From Bitlaw.com”
The term “common law” indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law. Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark.
Now if course, registered trademarks are usually more powerful than common law trademarks, however, not necessarily and there is case law to prove that.
My main point has to do with the inherent value of owning the .com version of your domain name or website.
First of all this is the definition of “inherent” from Dictionary.com:
existing in someone or something as a permanent and inseparable element, quality, or attribute: an inherent distrust of strangers.
Here are a few related points:
If you own the .com version of a name, the name is not likely (highly unlikely) trademarked by another party.
The reasons are that if the name were trademarked by another entity you likely would have never been able to register it- or you would have already been asked to cease using it.
Either by court order or less formally.
Either way you would know that there is an issue with the use of the name.
There are too many rights protections mechanisms in place with the domain registries and with ICANN right off the bat. (see Trademark Clearinghouse) for one.
Also, you would have likely gotten tripped up with improper usage of the name if there were any conflicts. The high likelihood is that the business that owns the registered trademark would also have likely already purchased the .com version of the name.
If you use the name for trade/commerce then you have likely already engendered “common law” trademark rights which are actually significant. However, not likely as powerful as a State or Federally (USPTO) registered trademark. However, the “common law” mark could trump them all based on prior use and if it is a “strong” mark. (see usemarks)
The fact is that if you own the .com version of a domain name, no other party is likely to register the name with another extension and use it for business purposes.
Let me give you an example.
Lets say you own the domain name Trinexeo.com.
Just made that domain name up and it is currently unregistered.
So for my example, what if someone registered that domain name and used it for commerce.
They would likely have soon established common law trademark rights as well as developed a business brand with that name.
What if the chance of someone then going out and registering say Trinexia.biz or Trinexia.anything and trying to use it for businesss?
They would be foolish to use that name.
They may infringe your common law trademark.
They may create a confusingly similar business name which is no benefit to them.
So part of the inherent value of owning the .com version of your domain name is that it effectively can serve as an unofficial “trademark block” of sorts to further registrations.
Why would someone else waste their good money on another extension when you own the .com?
They might and you might sue them. They might register another version of your .com name and if they use the name in commerce (in violation of your common law trademark) they will probably send traffic and customers to your site business. They might try to trademark the name after you are already using the .com version in commerce and they will lose in arbitration.
So back to my main point regarding the value of owning the .com version of a good domain name that doesn’t infringe on another parties registered trademark, trade name or usemark. You can take the dot whatever.
I’ll take my .com domain name into battle any day of the week.
I call that my firewall.””””
Like I said an interesting point of view.
Of course we see companies starting on domains that are either available for registration or on the second market which can easily be confused with the left and right of the dot.
The only real case on record is the UDRP for Tes.co where the panel took into account the left and the right of the dot to find the registrant infringed on the TESCO trademark but again that was based on a trademark not just a .com registration.
Anyway interesting.
”The only real case on record is the UDRP for Tes.co where the panel took into account the left and the right of the dot to find the registrant infringed on the TESCO trademark but again that was based on a trademark not just a .com registration”
Tes.co / Tesco is a .CO, not a .COM, and would be a more recent reg than the .com would be. That might have given them less of a footing to stand on.
This post reflects a basic misunderstanding of trademark rights and infringement.
the concept of “confusingly similar” names is not just based on string similarity. It is based on similarity in the minds of your customers.
So, the same string can easily co-exist in different tld’s without any potential infringement with each other as long as they provide distinct goods and services.
Having the .com is not going to help you stop anyone from getting the same string in another TLD.
Related to new gTLDs & trademarks:
http://www.circleid.com/posts/20140211_court_says_gtlds_arent_domain_names_for_cybersquatting_purposes/
From what I’ve seen, the presence of an established business using a given name in .COM does tend to deter new startups from using identical or very similar names. My naming clients tend to be instinctively averse to competing with twin brands. So, legal trademark rights aside, I would expect an up-and-running .COM brand to act as a practical deterrent for business adoption of similar names in other extensions.
The same is not always true when the .COM is merely parked. Many startups do opt for their chosen name in other extensions when the .COM appears to be unused and strikes them as not easily obtainable or too expensive . The wisdom of that choice depends on the unique balance of pros and cons in each case. But my point here is that parked .COMs do not have anywhere near the same deterrent effect as .COM businesses.
So when the .COM is truly in use, I’d expect that registration of non-dictionary strings in new TLDs will be due almost entirely to brand protection concerns, cybersquatters, and misguided domainer speculation. Startups will shy away from names which obligate them to extra competition or infringement issues.
This is a pragmatic question. Whether common-law trademarks really would derive from a functioning .COM website or not really is less important than the gut feeling of business owners who don’t want to incur extra risk and cost.
Hello Mhb,
The best overall game stopper is to use a /generic gTLD mark as a subdomain. Game over !
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
@Joseph,
I am surprised that a parked .com is not also a deterrent to your clients. If a business were to choose an alternative but matching domain on a parallel TLD and the owner of the parked domain discovers it, the parked domain owner is likely to increase the asking price. Alternatively, the parked domain remains available for your client’s competitors to buy.
The more success a business has on an alternative TLD, the more they are susceptible to being ‘gouged’ at some point in the future. An example would be Wantable.co eventually becoming successful and having to pay $200K for their parallel .COM.
I doubt wantable.com would have reached anywhere near that selling price if they bought it originally (without first branding on the .co). TheFacebook.com converting to Facebook.com is another example of a “pennywise” strategy that turns into a “pound-foolish” cost.
Good comments Joseph and James. I agree Joseph I had a client who loved the name Mango and was thinking they were going to go with that as the name, they were going to wait for .web or .shop to be available and go for that, they knew the .com was taken, but when I pointed out that it was a developed site of a pretty major fashion brand, he immediately said “I don’t want to be Mango.web with this out there right ?’ I said I would advise against it, too much potential for problems and other nonsense.
James I agree with you in one respect with a name like wantable, but there are cases where the name is parked and the company has already inquired and the price was too high. It also requires doing due diligence as to who owns it and is parking it. For example if Thunayan Al-Ghanim (Elequa) owned it, I know he is never selling so that name being parked is not going to sway me developing on a .co because there is no chance of acquiring the domain.
Now what if Michael the owner of this blog owned it and parked it ? I know Michael is not selling cheap, so the name may always be out of my price range, now I agree with your initial point that once Michael sees FashionModels.co developed and marketed he is upping the price on FashionModels.com.
The key is to exhaust all angles with the ideal name and then make your next move, due diligence on who owns the name means a lot.
I cannot agree with your assessment of the Facebook situation, that move was certainly logical, and when the initial concept was created Mark and Eduardo had no idea of what it would become. When they rebranded they could easily afford it, and I don’t think Facebook was ever going to be purchased cheap, cheap, plenty of people had gone to college well before the creation of the website and knew what a Facebook was, the 1997 comedy Dead Man on Campus with an unknown Jason Siegel talks about whacking it to the Freshman facebook. Its not the same as the wantable example imo.
encirca is correct. But even more significantly, just using a domain name does not establish any trademark rights — the domain name — either as a whole or the characters to the left of the dot — has to be used as a trademark (source indicator) and not merely as a domain name (Internet address) to gain trademark rights.
Also, while the proposed strategy is interesting, it would not in itself prevent the registration of second level domains in the new gTLDs any better than using other RPMs or the TMCH. In fact, those procedures would still have to be utilized to enforce the rights your trademark use could establish.
well, lets not forget there was a time where if you intended to be operating ONLY on the internet people though you were batshit insane or equated it with a pipedream.
using some random bad gTLD or even a shitty .com in 2014 is not going to necessarily break your business. yes, there are best practices/recommendations and whatnot but compared to 1995 its a wide open world.
you want credibility in 1995? a .com address wasnt going to get you anywhere further because most people didnt even own a compter and if they did they didnt have “internet”.. it may get you laughed at more for even being involved in the geeky internet but thats it.
most folks that argue gTLD wont become “normal” when a flood like this has happened probably has an agenda. im not saying it will be smooth process but the gates are open so unless they close quickly (or you’re operating a registry) this is the way of the future.