End of the ".com" era

An applicant of a domain name for a new website is now no longer constrained to “.com”, “.co.uk” or “.net”. With the expansion of the generic top level domain (gTLD) program, started in 2011 by ICANN (the Internet Corporation for Assigned Names and Numbers, the body overseeing the registration of domains and any disputes that arise), thousands of new suffixes have been launched so that applicants now have a wealth of alternatives to choose from (“.London”, “.bank” and “.luxury”, to name but a few). Since almost any word can be registered as a domain, the number of new suffixes looks set to rise.

This holds great potential for brand management, facilitating more reliable web searches and allowing non-western countries to use their own lettering in the domain names of their websites. On the other hand, it poses a number of significant reputational issues should the domain name fall into the wrong hands, not just from cybersquatters (who could charge extortionate fees to give up the rights to the domain) but also from rival or imposter websites, opening the door to damage caused by the distribution of counterfeit goods, trade mark abuse or hijacking the goodwill of the legitimate brand.

However, it is ICANN’s approval of the new “.sucks” gTLD that is the cause of the latest furore, with brands desperate to block its launch to the general public on 1 June this year. The owners of the “.sucks” registry are marketing this as an opportunity for disgruntled consumers to voice their opinions, but this presents a very real threat that brand owners and businesses could be subject to undesirable and undeserved ridicule and criticism.

The “.sucks” domain is currently available to brand owners to register the domain for its trade marks (at a premium price) but it will soon become generally available on a first come, first served basis. Those with brands to protect may wish to pay the higher fees now to buy the relevant domains and ensure that no one else can get hold of them.

Alternatively, in the event that any such “gripe sites” emerge, brand owners can look to dispute the registrations, particularly if the domain name incorporates a registered trade mark. In any case, there will be some comfort in the fact that arbitrators and the courts have previously been inclined to order the transfer of offending domain names where there has been bad faith or a lack of legitimate use.

When it comes to reputation, however, prevention is often better than cure. Just ask Ms Swift.

Sophia Costley

Information contained in this post does not constitute legal advice and is provided for informational purposes only. Recipients should not act upon it, but should seek legal advice relevant to their own situation.