Building an Effective Company Domain Name Portfolio

In this journal article, I discuss effective techniques for building a domain name portfolio to support company brands, and the budget considerations of defensive registrations to discourage cybersquatters.

NEW TOP-LEVEL DOMAIN NAMES ADD .XXXTRA COMPANY BURDEN –

GROUP ACTIVITIES FOR CREATING EFFECTIVE

DOMAIN REGISTRATION PORTFOLIOS

By

c 2012-2015 Perry Binder

Published in The Atlantic Law Journal (footnotes deleted)

I.          Introduction

If businesses have any doubt whether sex sells, consider that the domain name sex.com was sold for $13 million in 2010.  In 2011, attorneys for companies and even universities had sex.com on their minds as they attempted to keep valuable trade names out of the hands of wrongdoers, by preemptively registering their respective “Names.xxx” in preparation for the launch of .xxx in 2012.  For example, a United Kingdom domain registrar reported in August 2011 that only 20 percent of pre-registrations for the .xxx domain name were from businesses involved in pornography, with the other 80 percent purchased by companies simply trying to guard their valuable trademarks.  In February 2012, entrepreneur Richard Branson successfully challenged the registration of RichardBranson.xxx, presumably to protect his personal and business brands.

Large corporations maintain several trademark prosecution attorneys and paralegals to police against infringements worldwide.  The advent of the internet took this activity to a new level, as companies in the 1990’s attempted to figure out the relationship between their brand names and the first wave of top-level domains (“TLDs”).  At the time, many companies were slow to react while savvy entrepreneurs purchased several “Company.com” domain names and sold them to the very companies with identical trade names.  When the Anti-Cybersquatting Consumer Protection Act of 1999 was passed to prevent such domain name registrations done in bad faith, these enterprising individuals were then labeled as cybersquatters.

Companies are continually deciding which domain names to register for strategic business purposes or for the defensive purpose of keeping names out of the hands of cybersquatters, business competitors, and those who wish to “gripe” about a company.  There are now twenty-two generic TLDs (“gTLDs”), ranging from .com to .xxx.  In addition, TLDs have been established for over 250 countries and external territories and are referred to as "country-code" TLDs or "ccTLDs.”Finally, in early 2012, companies decided whether to spend $185,000 to purchase their company name as a branded TLD extension, or a generic word which may relate to the company’s business or product:

In the for-profit world, that means that instead of going to coke.com or nike.com, you might be able to go to drink.coke or justdoit.nike.  Nonprofit groups could reserve the .school domain and hand one out to every elementary school.  Cities could consolidate their online presence at .nyc or .losangeles.  And interest groups could stake out their own corner of the Web by offering every auto junkie a .car domain name, every law firm a .law address, and every restaurant a site that ended with .food.

With so many choices and shrinking corporate budgets, a business strategy must be developed by large and small businesses to determine which domain names to register and which to walk away from.  Equally important is a strategy for deciding which domain names owned by cybersquatters are worth retrieving and which ones may not be worth the effort.

The purpose of this paper is to discuss the intersection of trademark law and domain name law; identify the means for a company to retrieve domain names through litigation or domain name arbitration; develop a decision tree to determine which domains are worth pursuing with legal action; and share interactive teaching methods on how students can create a domain name business portfolio. 

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The Atlantic Law Journal (Volume 14)