Be Selective When Protecting Your Trademark With DomainsPosted: December 13, 2011
Trick question: How many different domains are there that could infringe upon your trademark?
Answer: Nearly infinite. I say “nearly” because domains do have an upper length limit. So technically there aren’t an infinite amount of domain possibilities, but an astromically high number.
To protect your trademark 100% without a doubt, you would have to get all of them. That’s registration fees times nearly infinite domains, totaling an amount of money not even in existence. In other words, not even Apple could afford to do this.
So first and foremost, get the thought of 100% protecting your trademark in the domain space out of your mind.
Seems logical enough, right? Well I’m writing this article because I recently witnessed one of the worst defensive registrations I’ve ever seen.
The University of Kansas recently defensively registered certain adult domains in .xxx to keep them from falling into the wrong hands. One of those domains was KUNurses.xxx. What’s wrong with getting that domain? Every other extension is available and has never been registered!
Stop and think about that for a second. Whoever at KU is in charge of these decisions conceived an adult domain idea based on their university before the entire adult industry ever did.
Clearly there is a line to be drawn on what you really need to get to protect your trademark. What kinds of domains should you consider going after?
1. Other extensions of your primary brand
If there’s anything to learn from how Google does their domaining, it’s that they nab other extensions of their domain. Any company remotely close to Google’s size should do that. In fact, Google has done the smart thing and run country-specific versions of its site on the various country-code extensions they get, which is part of why it’s grown so huge worldwide.
However…do you need every extension? Probably not. If you’re a local business merely targeting your locale, you may not even need any other extensions besides .com. The more prominent you are, the more concerned you should be with at least the major TLDs. The vast majority of businesses shouldn’t worry about getting the most obscure extensions.
Also note that it’s usually only your primary brand you’d need to get other extensions of. If you’re large enough, you might still consider some of the other possibilities below in other extensions, but it can grow into a huge number of unnecessary domains if you’re not careful and selective.
2. Common typos of your primary brand
Both Facebook and Twitter have been especially going after major typos of their domains in .com. Perhaps they finally realized that some of those typos have been getting tens of thousands of visitors a day. The more traffic a site has, the more typos they lose traffic to.
However…do you need every typo of your brand? Probably not. If you run your domain through DomainTools’ typo finder, you’ll get back a lot of worthless typos unless you’re a Facebook or Google. Even if someone else got them, it’s unlikely anyone would make those mistypes.
3. Your product/service brands
If you use branded products or services, consider protecting those brands. Sometimes those brands may even be more valuable than your company brand. If you don’t use product/service brands, consider at least getting your company brand + the kind of product/service you deal in in .com. Consider for instance how many searches there are for combos like Google Maps and Yahoo Mail. That’s why these names can be targeted.
However…should you get every such variation? Maybe not. You might have certain product/service brands that aren’t well known or are extremely niche/limited in scope. In those cases, the chances of someone squatting on those domains would be smaller.
4. Your trademark + blog and other important keywords
If you’re brand is big enough, your brand + blog will get squatted on if you don’t get it first. You should also survey other possibilities like perhaps store or tube that would fit with your brand, and consider possibilities of sites against your brand, like “*your brand* Sucks”.
However…should you get every major keyword with your brand? Probably not. IF the word combined with your brand doesn’t represent something someone else could profit from, no one else would likely get it. If you aren’t careful, you could end up with a KUNurses – fearing an infringement that would never happen.
5. Reactive measures against major infringers
If someone has infringed on your trademark in bad faith and is clearly profiting from it or damaging your brand, you may want to take action. You can send a C&D email and at least demand they take down their site and hand over the domain. If they refuse, then consider filing UDRP to dispute their registration. Twitter failed to secure their most major typos early on but have recently gotten them back through UDRP. (Note: Always contact a lawyer and seek legal advice before proceeding with any legal measures.)
However…should you go after every infringing domain? It’s tempting to, but probably not worth it.
First off, there ARE some cases where other sites using your trademark have helped your popularity. Twitter for instance has spawned many sites and apps that use Twitter/Tweet in their name. If they went after every one of them, they would wind up destroying that ecosystem.
Secondly, not every infringing domain is making money, doing damage to you, or worth you taking control of. Especially as a brand gets larger, there may be thousands of domains registered that infringe upon the trademark, many of them completely horrible quality that may never even be seen by anyone else let alone cause any damage. In such cases, the effort and cost to get those domains probably isn’t worth it.
What’s the overall lesson to be learned? Consider what the money cost of protectively registering domains or going after infringing domains would be. What could that money do for your business otherwise? Keep that in mind as you determine which domains you really need to protect and which you don’t.
The information contained in this post is for informational purposes only and does not constitute legal advice or a substitute for legal counsel.