Master of Your Domain?

Companies face a dot-com crisis as new top-level domains names are rolled out.

April 02, 2013

NEW YORK – Companies with a web presence (redundant, no?) may soon face what Adweek characterizes as a “dot-com identity crisis,” with phishers and cybersquatters looking to cash in on an influx of new top-level domains.

Beginning April 23, Icann, the organization that manages the Internet’s domain system, will begin rolling out the first of more than 1,400 new top-level domains (TLD) or suffixes (.com, .net and .edu, for example) that help browsers navigate to websites.

As a result, new generic names such as .shop, .buy and .baby will be unveiled — a 6,300% increase in web site domains. And for brands that want to register their trademarks and variations that fall to the left of the dot, this proliferation of domains presents a financial, legal and logistical nightmare.

"We're hostage to the situation," said Bob Liodice, president and CEO of the Association of National Advertisers. "Icann takes our concerns seriously, but they don't act on them."

With today’s current universe of 22 Internet TLDs, Facebook has 2,000 defensive registrations across domains such as .info, .biz, .net and .org. But with hundreds more soon arriving, it will have to resort to “legal takedowns as they happen,” Adweek said.

"We routinely have tens of thousands of enforcement targets. These infringing domain names are frequently used in efforts to defraud our users. With the impending launch of over 1,400 new TLDs, we face enormous challenges in protecting our users and our brand," wrote Susan Kawaguchi, Facebook's domain name manager, in a letter to Icann.

While Icann has put certain trademark protections in place, major brand owners such as Coca-Cola, Verizon, Procter & Gamble, Microsoft, Facebook and Nestlé, led by the Association of National Advertisers, maintain there simply aren't enough.

"This is one case where it's not clear that more is better," Federal Trade Commissioner Julie Brill said. "I remained concerned — as I have been since Icann first announced its plans — that the expansion could create opportunities for scammers to defraud consumers online, shrink law enforcement's ability to catch scam artists, and divert the resources of legitimate businesses into litigating and protecting their own good names."

"It's not a fair system," said Brad Newberg, a partner with Reed Smith, who represents a number of large brand owners. "The protections that were put into place are extremely costly, put all the burden on the trademark owner, and may not be effective at all."

With the costs of defensive registrations sure to skyrocket into the tens of millions, many brands are rethinking their Internet identity strategies.

"There is no way this fortress mentality can be continued going forward," said Bill Smith, a senior policy advisor for PayPal.

"Companies aren't sure they should defensively register," said Amy Mushahwar, an attorney with Ballard Spahr, which represents advertisers. "What they are contemplating is boycotting the defensive registration all together."

In the meantime, brand owners don't have a lot of options if they want to protect their brands on the Internet.

"We have to sit back, watch and pray for the best," Liodice said. "There's not much marketers can do except defensive registrations. Icann hasn't given us anything else. We'll see dozens and dozens of lawsuits popping up. If this thing goes bananas, we'll all be in tough shape and it will be hard to unravel."

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