7 Steps to Protect Your Trademarks from Domain Name Cybersquatters

More than 900 new top-level domains (TLDs) – such as .Attorney, .Tech and .Gripe – are becoming available between 2014 and 2016, and another round of new TLDs will launch at an undetermined date in the future.

Each new TLD is an opportunity for a domain name cybersquatter to register your trademark as a domain name with bad faith intent to profit from it.

Waiting to defend your trademarks can be costly. Hoping that the whole issue will go away is not a realistic strategy. The rules for intellectual property protection have changed.

There are proactive steps you can take now to prevent cybersquatting. Understanding the seven steps discussed in this interview should be your top priority if your company owns a trademark.

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About the Interviewee

Daniel GreenbergDaniel Greenberg is the founder and director of Lexsynergy Limited, a brand protection firm that specializes in domain name registrations, renewals, transfers and management.

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If you’re a small to medium sized business with a brand or trademarks to protect, you’ll want to define a strategy and plan to deal with the hundreds of new top-level domains being launched. Worst case scenario, a squatter registers your business name or trademark or a competing and confusingly similar offering is launched. Stay tuned to learn more.

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Today, I am interviewing someone who is an expert in this exact topic and we are going to figure out what to do together. I would like to welcome to the show, Daniel Greenberg, Director at Lexsynergy, a firm based in the United Kingdom with offices all around the world that specializes in domain name registrations, renewals, transfers and management. Welcome to the show, Daniel.

Daniel Greenberg: Great. Thank you for having me.

Michael: So, let me set the stage on the new top-level domains. I know you and I have been in this space for a couple of years and we understand what is going on, but a lot of the audience and maybe a lot of entrepreneurs that are wrestling with this, that may have done a search on Google or found this interview on a social media platform may not know what is going on with the new top-level domains. Top-level domains are like .COM, .NET, .ORG, .INFO, .BIZ, which are the ones that most of us know about that have been out for years.

But there is a whole new set of top-level domains that have been launched recently. How many new top-level domains have been launched in the past year or so, Daniel, that are live today?

Daniel: There are just over three hundred that have been launched, so it is a fair number, so it has added to the marketplace.

Michael: Yeah, so if people have not realized it, in addition to those five that I mentioned, there is three hundred more that are now in the marketplace.

Daniel: Exactly, more choice on the Internet.

Michael: Yeah.

Daniel: More issues, but also more advantages for people that are trying to get into the business.

Michael: Right. So, if you are a startup, it is great because now you have got some new options to take a look at because everything in .COM is reserved of course, but if you are business owner with a brand and a trademark already, now you have got an expanded set of domain names that could be an issue. Roughly how many top-level domains will be launched in 2015?

Daniel: (Unclear 3:14.8) will be about another three hundred. In total, there are about nine hundred TLDs that will launch, so there may be a bit of a delay, but this year I will probably say it will be the same as last year. Round about three hundred or so.

Michael: Wow.

Daniel: So, there will be about six hundred at the end of 2015, which can create a headache for a trademark owner, but at the same time, like we said, an opportunity for people that are trying to find a good, unique name in the domain name space.

Michael: Okay. So, nine hundred total are going to come out, so three hundred last year, three hundred in 2015, and then probably three hundred in 2016.

Daniel: Yes, that is right. Some of them are also branded TLDs that will not be released to the general public, so those are obviously closed to that particular trademark owner. So, for instance, if someone applied for .30Group, the bank, they would then reserve it for themselves.

Michael: Got you. So, those are large corporations that wanted to have their own top-level domain for internal purposes or for just their use publicly.

Daniel: Exactly.

Michael: Okay. So, after those nine hundred come out, are there going to be any more? Do people who are watching this show need to worry about this issue going forward or is it just one that stops at the end of these nine hundred?

Daniel: I would like to say it does stop at the nine hundred, but there is talk at ICANN that they will have a second round of applications. So, I think people that lost out on the first round, applying for their own TLD, will have a second opportunity. I am not too sure when that would happen, but there are discussions about that. So, there could be more. There could be thousands.

Michael: Okay, so this issue is not going away. I cannot just stick my head in the sand for three years and hope that this thing just goes away and all these domain names go defunct. They are going to come out and then more are going to come out after that.

Daniel: You sound like in-house counsel at most large corporations. They will say let’s rather not open a can of worms, but you have to deal with it and that is the purpose of this discussion, as well as other discussions that are ongoing, is that you need to be proactive. You have to know what is out there in order to deal with it. Otherwise, you will not get anywhere.

Michael: Yeah, and what if they are not? What if people are not proactive? Business owners, and I mainly want to gear towards small and medium-sized business owners because the large corporations are hiring firms like yours to manage these issues for them. They have the resource to do this. To spend – I don’t know – one million, two million or whatever on domain names and buying those is probably nothing compared to their marketing expenses, but it is the small and medium-sized businesses that say, “Do I really need these extra ten, twenty, nine hundred domain names that are going to cost me hundreds, thousands, tens of thousands of dollars per year just defensively?” It is not bringing in any additional revenue.

So, what is the worst-case scenario? What do people need to worry about if they just stick their heads in the sand and hope that this all goes away?

Daniel: Well, for smaller businesses, it is actually more important because if I am a small business and I have got my .COM, .US, .CO.UK domain, that is very important for me. People find me on the web. Now, if someone registers the identical matching domain – say I am a pub, for example, or a bad, and I am a bar around the corner, and I will use an example in the UK. Royal Oak. It is a famous pub. It is a small, little pub around the corner. Now, if someone registers RoyalOak.pub, people will be confused, there will be a lot of issues, and that really relates to the industry in which that small business operates.

So, it is very important for the small business owner to be aware of it, and if they do decide to stick their heads in the sand, it could happen that it could affect their business. It could divert traffic away to competing sites, to unrelated sites, but obviously you need to be focused and (Unclear 7:19.3) be proactive in the whole approach. Obviously large corporations do have a lot of money behind them, so if someone does infringe, they can file a UDRP complaint. They can take action. For a smaller business, they do not have that amount of money, so if you work out how much a UDRP costs, that cost is far greater than registering a domain name for ten or twenty years.

So, it is not as expensive as you think, and you just have to be strategic and pick the TLDs you want to focus on.

Michael: Yeah. Okay, and so that is going to be one of the questions that I am going to ask you later in the show. How do you pick the TLDs? If I am a software as a business (SAB) owner in the accounting space, let’s say, that I create invoices for small businesses to use and send to people, what TLDs do I even need to worry about? I would like that business owner to watch this show and be able to say, “Okay, I realize that there is a whole bunch of domains, but I really only need to worry about these few, and now, after watching Daniel, I know where to go to look for them, how to watch when new ones are coming out, how to register my trademark as a defensive play, and now I have minimized my cost, but I have covered my downside.”

So, that is what I would like them to get out of watching this show.

Daniel: Okay.

Michael: So, you and I had a chat before this interview. It was the pre-interview. You basically put together a roadmap for business owners, trademark owners to be aware of, and it is a seven-step roadmap that we are going to go through one-by-one. At a high level, it includes filing a trademark, filing with the Trademark Clearing House, doing protected mark lifts and making sure that your brands are protected if necessary. Focusing on the right top-level domains, watching out for sunrise, and we will talk about what sunrises are in top-level domains, looking out for the land rushes, and we will talk about what the land rush, and them monitoring your marks on an ongoing basis.

So, let’s step through them one-by-one, Daniel. The first step is to file a trademark for your brand. And you have mentioned that you are an attorney to me before the show. I should have said this is not legal advice. You are an attorney. You are not a practicing attorney. You have practicing attorneys in your firm. If anybody is watching this and they think that they are getting legal advice, they are mistaken and they need to go consult an attorney. Okay, that is out of the way.

The first thing that a small business owner should do is determine if they have a trademark, right, and then file it.

Daniel: (Unclear 10:07.3).

Michael: What do you recommend that people are aware of with respect to filing a trademark?

Daniel: So, for any business, you need to obviously protect your name, and the best way of doing that is through applying for a trademark in the country where you trade. So, as a business in the US, you would file with the USPTO, the US Trademarks Office. You would file a trademark in a particular class in which you do business or that relates to your particular goods or services. So, you would get a trademark registration. It can take about nine months to a year to get the registration, and that is very important not just from a domain name perspective, but generally you would then have, when the mark proceeds to registration, a registered right to that name.

If you do not have that, then it is obviously more difficult to prove your rights and there is a whole bunch of evidence that you would have to then put forward in order to prove your rights. So, it is (Unclear 11:01.4) proof that you do have some sort of registered right. So, that is the first step.

Michael: All right. So, as an example, when I launched DomainSherpa back in late 2010, I wanted to make sure there was not another DomainSherpa out there, that it was not confusingly similar, and there was not and I bought the domain name and I named my company that, and then I filed a trademark with the United States Patent and Trademark Office, like you said, because that is where I am located.

Daniel: That is right.

Michael: Now, people all over the world watch DomainSherpa, watch these interviews. Do I need to file a trademark in other countries because I have customers or audience in those countries, or is the United States sufficient for me?

Daniel: Well, that is always a difficult question. It is really dependent on how much money you have to spend. You can file a trademark to self. I would normally advise someone to consult an attorney. The reason being you can also file your tax returns online, but you are not going to give it to your IT Department to do. You would give it to your accountant. So, in that respect, you need that advice, but I would say file in your primary market first, and then you can extend it to other markets as well, bearing in mind that trademarks are not territorial, so you only get protection in the country where you have your trademark registered.

So, I would say, for instance, if you are in the US, obviously US mark. You should apply for that, and then, if you deal with the European Union, there is a thing called a community trademark (CTM), and that is a geographical mark that covers all the European Union countries so that you file one mark and get protection in all those countries. But it is very important, before you do file, to do a search just to make sure that there are no suppliers. (Unclear 12:44.0) pops up in, say, Germany or some other country saying, “Well, I have a mark in that country,” and then it leads to all sorts of legal issues, but the option is there to do that.

Michael: Excellent. And if people want to do a search in the United States on trademarks, the site that I go to is Trademark247.com. It is put out by one of our sponsors, Intellum, but you can also go directly to the United States Patent and Trademark Office as Tes2@USPTO.gov, I believe. And then, if I wanted to search the European Union plus Madrid protocol to find those countries, what is the website that I can go to, to search those, Daniel?

Daniel: That is (Unclear 13:31.9). The exact address I would have to search for you and provide it to you after, so you can put it on your site.

Michael: I have WIPO. No, that is not WIPO. Is it WIPO.in/(Unclear 13:47.1)?

Daniel: Yes, WIPO.int. You can find if you search on there. They do have quite a comprehensive search, so the Madrid protocol covers countries that are (Unclear 14:00.9) to the Madrid protocol that allow you to extend marks to certain countries through your phone trademark’s office. So, via the US, you could extend it to certain countries. (Unclear 14:10.5). I would have to look and see and find out what their address is. I do not know offhand. Oh, I have got it over here if you want that. It is OAMI.Europa.eu.

Michael: Excellent. All right.

Daniel: And it is a free, searchable database.

Michael: Okay, so that is the first thing to do. You have a business. You launch a product or service. You want to trademark that product or service, make it unique, make it yours. You have to file the trademark in the country. That is number one. Number two is, now, and if you are lucky, you get the exact match .COM. So, if it is Royal Oak Pub, maybe they want to get a Royal Oak trademark in the industrial classification for food and beverage, and I am not sure exactly what that is. So, they own, maybe, RoyalOak.com if they are lucky, and then they file their trademark. Well, actually they could be whatever domain name they want, but they want to protect that trademark.

So, the next step after owning a trademark is to file with the Trademark Clearinghouse. Now, let’s take a step back, and can you explain what the Trademark Clearinghouse is to entrepreneurs and business owners?

Daniel: The Trademark Clearinghouse is an essential repository that validates registered trademarks. And what they do is they see that you actually have a registration, that you have, in fact, used the mark, you sign a declaration, you submit proof of use that you have used the mark in some way, and what they then do is they validate that you have those rights. Once they do that, they then give you an SND file, which is a code that allows you to participate in the sunrise period, which you previously mentioned, which is the launch period for a new gTLD. So, when a new gTLD launches, it will launch with a sunrise, so the trademark owners have a priority period over other individuals or businesses so that they can secure their trademarks first.

So, it is what ICANN agreed to do to give trademark owners some sort of protection in this new gTLD program, so that is why it is very important to have a registered trademark. They do not accept trademark applications, as many people might think, so you actually need a registration.

Michael: Okay. So, if I own a trademark for DomainSherpa, which I do, and I filed with the Trademark Clearinghouse and got approved for DomainSherpa within the Trademark Clearinghouse, then I would have first right to reserve DomainSherpa.anything that comes out over the next few years or however long I am paying for the Trademark Clearinghouse fees.

Daniel: Yes, exactly, but what could happen is maybe someone in South America, maybe Brazil, has got DomainSherpa as a registered trademark. They can also validate that with the Clearinghouse, but then what will happen is, if you both apply for, say, DomainSherpa.domains, you would then go through an auction. So, then you would at least have an opportunity to outbid that particular person, but still it is a priority period, so people from the general public cannot participate in that period.

Michael: Got you. So, it is not a guarantee that I get it and it does not come without a cost, and we will talk about that a little bit later on, but basically it is to get at the head of the line for any new top-level domains that are coming out for me to register my trademark.

Daniel: It puts you in a very good position.

Michael: Okay. And how much does it cost to file a Trademark Clearinghouse application?

Daniel: For a one-year application for verification, it is $204.

Michael: Does it go down in price if I register it for, say, three years because we have all these new top-level domains coming out?

Daniel: Yes, for three years, it is $595, and then with the option to renew it either for a one-year, three-year, or five-year period.

Michael: Now, I actually filed my own trademark in the United States, I believe, and so I just paid the fees of the USPTO, which I want to say was a few hundred dollars, but I cannot remember the exact number.

Daniel: It should be around about maybe eight hundred dollars.

Michael: Eight hundred, okay.

Daniel: I think it might be, yeah.

Michael: And if I wanted to pay an attorney to file a trademark on my behalf, how much more am I looking to spend roughly, Daniel?

Daniel: Well, it really depends on where you are, but you could look at about maybe, I would say, between $1,500 to maybe $3,000, depending on your attorney and size of the law firm.

Michael: Yeah, larger firms typically charge a higher billable rate per hour.

Daniel: That is right. That is right. And sometimes they may charge you for a search that they will conduct beforehand just so they can see any pitfalls that you may experience along the way.

Michael: Okay, so thanks for filling in those numbers on the trademark. On the Trademark Clearinghouse application, you said $204 for one year, $595 for three years. If I wanted to file it for three years and then I wanted to have a firm like yours also do that filing on my behalf, roughly what does it cost? And I am not holding you to firm numbers here, but roughly what would it cost an entrepreneur?

Daniel: Well, that is our past. What we have done is we have incorporated the cost of the Trademark Clearinghouse into those fees that we have provided. You can go direct, so that would be obviously a little bit cheaper, but it is best to go through a Trademark Clearinghouse agent just because you want to make sure that information that is being submitted is correct because you have only one chance or opportunity to correct the information. If you do not, you could lose and then have to resubmit, and then obviously that becomes a more costly exercise.

Michael: Yeah, definitely. I find that if I plead ignorance at least with the USPTO, one of their examining attorneys will take pity on me and might give me a little bit of guidance, at least they have in the past. But in this case, you want to get it right. Otherwise, you could lose that application fee.

Daniel: Yes, I have sobbed a few times on the phone as well, so I know how it works.

Michael: All right. So, $595 gets you priority with all the new top-level domains coming out. How does a trademark owner decide if they want to get priority? Should they file with the Trademark Clearinghouse to get priority to pay a higher registration fee before they are open for general availability or should they just watch these new top-level domains come out and if somebody is trying to take advantage of their trademark, then send them a seize and desist letter and then file a lawsuit? How do they wrestle with those two things?

Daniel: What I would suggest first is that obviously through the Trademark Clearinghouse what they do do is a thing called a claims notification. So, if anyone does try and register a domain name that matches the trademark that has been validated at the Trademark Clearinghouse, the trademark owner would receive notification of that. So, there is some sort of watch service for an identical matching mark and variation. So, if your mark has a space in it, you can put a hyphen or remove the hyphen, so at least the trademark owner is being notified of it. So, you would be aware of an infringement. The person that does register the domain name would see the notice appear when he is registering the domain name, so they cannot plead ignorance and say, “Oh, well, I did not know that you did not have trademark rights,” so it is there for him to see.

They actually see the entry of the actual mark, and then you would need to decide what is practical and you have to pick your battles. I think you cannot spread yourself too thin. You need to see what industry you trade in. See what domain names relate to that industry. So, like I said with Royal Oak, you would look at maybe .PUB, .BAR, .RESTAURANT, and then you would have to acknowledge that you cannot go after everything and someone will register a mark that matches yours because we are obviously living in this global environment and it is online, so someone in some country will have a similar mark to yours or an identical mark.

Michael: Yeah.

Daniel: So, it is good to focus on your industry, and then also look at the generics. There are a lot of generic TLDs that are coming out that have wide application – maybe .CLUB, .BUSINESS, .GLOBAL – that can really relate to anything. So, I will also focus on those because they can be used for anything rather than, say, specific ones like – I don’t know – .SEXY or something like that, which may be specific, or .WEBCAM. Something along those lines.

Michael: Right. Okay, that makes sense. And I think a lot of small and medium-sized businesses understand that they pay services on a regular basis and 595 dollars for three years to be able to be notified if anybody is registering their trademark in any new top-level domain is advantageous. You need that information if you are going to manage a process. But the one question that I am sure entrepreneurs are wondering is: does the Trademark Clearinghouse notify potential registrants, people that are thinking about registering DomainSherpa.club, let’s say, of just the new top-level domains that are coming out or does it also tell them: “Hey, do not register DomainSherpa.net and DomainSherpa.info because there is a trademark on those”?

Daniel: No, it does not apply to preexisting TLDs before the new gTLD program launched, so all the new ones. It would be .CLUB and all the other nine hundred that will launch, but the person will have to click a button saying that they accept and they acknowledge that there is a trademark owner when they do register the particular domain name. So, there is that acknowledgement.

Michael: Okay, so ICANN did not seem to be able to go to all the older generic top-level domains.

Daniel: No, it would have been very difficult because obviously they have been around for a while and (Unclear 24:49.0) preexisting domains can (Unclear 24:50.6) some issues.

Michael: Okay, so I have got my trademark. I have filed for the Trademark Clearinghouse and I have my trademark listed in the Trademark Clearinghouse now. So, now, if you try to go register DomainSherpa.club, you should be notified that hey, there is a trademark and you are acknowledging that you are registering this domain even though you know somebody else has a trademark and it may be infringing. But if I wanted to, as a business owner, prevent you, Daniel, from registering DomainSherpa.club, there is an option called a Protected Marks List. And how does that work?

Daniel: So, three applicants that applied for TLDs, one of them is Donuts, Right Side, and then Minds and Machines. Combined, they applied for round about three hundred TLDs, and each of them have introduced this Marks Protected List. So, Donuts and Right Side call it the Domains Protected Marks List (DPML) and Minds and Machines call it the MMPML because in the domain name industry everyone loves an acronym, so I think it is a Minds and Machines Protected Marks List. And what that is basically is you pay a flat fee to protect your matching mark across all their TLDs. So, you would pay a fixed fee for five years and Donuts would then block your particular mark, so say if I use Lexsynergy as an example, we have a trademark as well, so we would then block Lexsynergy. Then what happens is it is a non-resolving domain and if you search the WhoIS, it will merely say that it is blocked, and then that prevents people from registering it.

Now, the fee that you pay covers a five-year period, so when you work out per unit, it is relatively cost efficient to go that route. So, what it does do is it includes a lot of TLDs that you may not be interested in, but it also covers some that you may want to register. And so, rather than going through the registration process of one hundred domains, rather pay that central fee and block it. So, you would have to block it with each of those registries and they each have separate pricing for those blocks.

Michael: And roughly how much does one of those blocks run? Are we talking one hundred dollars for five years or are we talking one thousand dollars or ten thousand dollars?

Daniel: It is a bit expensive. The Donuts one, what we charge is $3,400, and that covers a fair number. I think they will eventually have round about two hundred TLDs. So, if you work out two hundred domain names for five years at 3,400, it is relatively low. Right Side, which has fewer domains, charges $2,600. And then Minds and Machines, which has much less, is about $1,300.

Michael: Okay, so let’s round up to eight or ten thousand dollars. If I am running a technology company and my app goes global and people are using it all around the world and it is popular, I am likely to get a lot of squatters buying my domain name in various top-level domains because they think it is cool. They do not realize that there are intellectual property laws that I may own the trademark for, and so it just makes sense for eight thousand dollars or ten thousand dollars to block three hundred plus top-level domains and just prevent other people from buying them.

Daniel: Exactly. And the value is in a name, and many people do not understand intellectual property trademarks and they do not understand domain names, and then you combine the two together, which causes greater confusion. So, if I were a startup, I would look at trying to protect myself as comprehensively as possible because you do not know where it could lead. Say, if you use What’s App as an example, that, when it started, was a simple messaging service. Now it has grown. I read in the news now that they are just under Facebook’s number of users, or they are catching up to Facebook should I say, so it is a fair number of users. But when it first started, they did not know where it was going to go, and at least you should take those steps to prevent the identical matching registrations.

You obviously cannot prevent the person that registers WhatsAppTexting.club or WhatsAppTexting.com, but at least the identical match, you have taken that step.

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Michael: Yeah, and that is a great example. So, What’s App started as a messenger on smartphones, right?

Daniel: That is right.

Michael: So, kids did not want to necessarily pay for all the texting fees and this app came along that allowed them to do everything that SMS texting did, but it did not cost them anything. They just downloaded this free app and were able to send pictures and videos and text messages to all their friends. They were founded by two former employees of Yahoo. They have over 600 million active users, and then of course they were bought by Facebook, I think for a reported 19 billion dollars.

When they started out, they were just this cool, little application. I think everybody in Silicon Valley and in the startup world want to be that cool, little application that starts out that has one hundred users, and then suddenly grows exponentially to ten thousand users and one hundred thousand users. They started out the right way. They bought WhatsApp.com right from the beginning, and that was their main domain name. And I am not sure if they filed for a trademark. Do you know if they filed in the Trademark Clearinghouse?

Daniel: Yes, they have filed in the Trademark Clearinghouse.

Michael: Okay, so they have a trademark. They filed in the Trademark Clearinghouse. Did they file for the Protected Marks Lists, like Donuts and Minds and Machines and Right Side?

Daniel: I actually have not checked that, but I would assume that they would have, but at the end of the day, the reason that they were sold for that amount of money that you mentioned was because their house was in order. They had a registered trademark. They could protect it. If you cannot protect your name, what is the point and will someone pay that value for it? And I think not. So, that is why it is very important. Like Instagram, Facebook, What’s App – all these relatively new businesses that have started have unique names that they have protected. So, that is the first step and it does add value, so it is not a wasted expense, but you are building up that intellectual property portfolio.

Michael: Yeah, great point. All right, so we have talked about trademarks, the Trademark Clearinghouse and the Protected Marks List. Let’s say that I am a really small business owner. I am under one million dollars in revenue. Maybe I have got a 30-percent profit margin, so I am generating three hundred thousand dollars in free cash flow, but I am not sure if I want to go through the process of a Trademark Clearinghouse and the Protected Marks List, but I have a trademark. If I skip those two steps, how can I look at the entire list of top-level domains that are both out and to be released and determine which ones are most appropriate for my small business? And let’s use an example. A tech business that is, say, doing accounting. A software as a service (SAS) business in the accounting space.

Daniel: Yes. So, you can look on the ICANN sites, even our site, Lexsynergy.com. We do have a list of all the TLDs that have been released or are going to be released. So, you can go through and just check off which ones are relevant to your industry. So, say, if it is .ACCOUNTANTS, .ACCOUNTING, .ACCOUNTANT, sometimes there (Unclear 32:31.0) rules in these new TLDs, so you should pay attention to that. Then, what you can do is look at which stage you would want to apply for that particular TLD. So, if you do not want to go through the sunrise, which is more expensive, you can go through the land rush, and every new TLD has a different type of land rush. And what a land rush is basically is a period that is just before it is released to the general public, but there is a premium charged on the domains to try and make it more exclusive.

So, you can secure it at that stage or wait for the GA stage, which is the general availability stage, and then register it then at the lower cost, but obviously, as you go down in the stages, there is a higher risk that someone else can snap it up before you. So, it is very important that if you are an accountant, you register your mark, .ACCOUNTANT, at the sunrise and then, say, you want to get maybe a more generic one; do that at the land rush. So, if you want to get maybe California.accountant, you would then try to get that at the land rush stage, because there are obviously a lot of generics that are very good for your industry. You may want to get that at that stage.

Michael: Okay, that makes sense. So, if I am running an accounting service online, let’s call it PayMe.com – I have no idea if it is an actual business or not, but we generate invoices. I am going to go to Lexsynergy.com, check out all the top-level domains that have been released and all the ones that are coming out, I am going to look through this list and I am going to say PayMe.horse. That is probably not going to be one that I need to worry about. PayMe.accountant, yes. PayMe.accountants, yes. Why they launched those is another topic. PayMe.accounting. Maybe PayMe.online I might want to think about.

Daniel: Yes. That is right, and then also you can look at maybe high risk ones. There is .REVIEW, .REVIEWS. Maybe you might be a bit worried that someone might say something about your business. They might review your accounting package, so that is important. There are also other ones like .GRIPE, .SEX, .WTF, .LOL. So, there are a lot out there that maybe you might want to register defensively, but that is really a question of cost.

Michael: Yeah, and if I am a really small business owner, maybe I am just going to forgo those because I do not have a lot of people complaining.

Daniel: Exactly.

Michael: But if I am, say, a four, five, or ten-million-dollar revenue business, I might want to actually control those types of TLDs.

Daniel: And also what must be remembered is that a lot of geo TLDs are coming out, so that is like .LONDON, .NYC, .VEGAS, and sometimes you can trade within that area so you can then also secure a localized one that may increase eventually your search engine ranking as the search engines pick up these new TLDs. So, say if you are based in London, you want to go for maybe Accountant.London, and then you could optimize that particular site.

Michael: That makes sense. Okay, so I have looked through the TLD list. I know which ones are top priority and which ones are sort of second priority, and then there is like hundreds of other TLDs that I may or may not care about.

Daniel: Yes.

Michael: If I file the Trademark Clearinghouse and I want PayMe.accountant, PayMe.accounting, and PayMe.accountants, I can then be first in line to try and register those during the sunrise period.

Daniel: Yes, exactly. So, what would happen is they would give you the SMD file that I mentioned and that allows you to register during the sunrise, so it is very important that you keep that also secure. As a registrar, we keep that for our clients just because you do not want people getting the file because then they can register domain names in your name, and then that is what you would use during the sunrise period.

Michael: And if the average price of the new top-level domains is about 25 dollars, let’s say, like if I go to GoDaddy and I do a search for PayMe and it shows me all of the available domain names, let’s say that it is about 25 dollars, how much am I likely to pay for my trademark in the sunrise period, even after I have paid for my Trademark Clearinghouse opportunity to register it early? Am I paying about 25 dollars or more?

Daniel: No, it can be much more than that. It really depends on the TLD. In the sunrise phase, some charge round about one hundred dollars, 150 dollars during the sunrise. Others can be substantially more depending on the jurisdiction. For instance, .VIN and .(Unclear 37:11.9), which are provinces in Austria, were over one thousand dollars, so that can be quite expensive, but then there are others that are more cost effective. So, the more generic ones are round about 100 to 150 dollars.

Michael: So, I am going to gripe right now because I am a business owner and I am sure business owners are watching this, saying, “Why are registries, the companies that are launching these new top-level domains and selling these domain names under their new top-level domain, charging more if I am a trademark owner and I have a right to register that domain name?”

Daniel: Well, trademark owners have that gripe as well, not just smaller businesses, because you have taken that effort to protect your rights. Registry operators are aware of it and they need to recover costs in some way, so they have put a premium on it, and they normally know that trademark owners would fork up that amount of money to protect and to have that priority period. So, it is in exchange for giving them a priority period. You are, in a way, compensating the registry for that. They have had to implement systems, and if they have to integrate their system with the Trademark Clearinghouse, the registrar has to do that. So, so many people are involved in the process to make it work that that has increased the costs.

But I do agree with you. It is unfair.

Michael: Yeah, so I am not just transferring the money that I might have to pay to defend against squatters to registries that are doing it. They actually have an additional cost to try and implement this new system.

Daniel: Yeah, exactly. If you look at it, say you are paying one hundred dollars for a sunrise, a UDRP complaint, which is a domain name dispute complaint, costs $1,300 to file, so it is one-tenth of the price if you compare it.

Michael: All right. So, if I file my Trademark Clearinghouse, that gives me opportunity to pay more money for the registration during the sunrise period and get in before anybody else can do that. If I do not pay for the Trademark Clearinghouse, then I cannot get in on the sunrise period of registrations. The next period that comes after sunrise is called land rush, and that is when anybody can register a domain name, but it comes at a higher cost. So, it is not the cost that you see on GoDaddy and Register.com, and the general availability cost. It is a land rush. You are paying more to get the best land, and those types of costs I have seen range from 150 dollars, up to tens of thousands of dollars depending on the domain.

Daniel: Exactly. Some of the registry operators call it the early access period because (Unclear 39:57.8) land rush, so on the first day it would be ten thousand dollars, the next it drops down to round about seven, and five, until it reaches around about one hundred dollars. So, that is correct.

Michael: Yeah, and these are generally serving generic words. So, let’s say that Attorney.nyc, if you want to be the preeminent attorney in New York City, or you want to be Accident.auto, you’re going to pay more for those types of keywords because a lot of advertising is in those markets. They understand that those domain names come at a premium and they are willing to sell them, but they are going to let the market decide and if you are willing to pay ten thousand for it on day one, let’s say, it is going to drop to eight thousand on day two, and all the way down after – I don’t know how many days – eight to ten days, it drops down to general availability pricing of 25 dollars, let’s say.

Daniel: That is right.

Michael: Okay. And in some cases, it actually does not drop down to the regular registration fee. It will actually stay at a raised, higher amount. So, that is the land rush, and anybody can participate in land rush. So, if I did not do the Trademark Clearinghouse and I did not do the Protected Marks List, I could say, “Well, I really only care about a couple of top-level domains. I am going to wait for land rush, see what the price is, maybe it will be low, I will get lucky and register it for a non-escalated price, but maybe I will just pay a few hundred bucks and be done with it.”

Daniel: Yes, you can take that approach. And if it is not as important to you as other domain names, then I would say that is a good approach, but some registry operators do have a first come, first serve land rush and others have an application, so at the end it is allocated to the applicant. If there is more than one, then it goes through to auction. On the first come, first serve, you will get it straight away. So, you also need to find out if it is first come, first serve or application because with application you are not in a rush. As long as you submit it within a certain period, you are okay. With first come, first serve, you obviously need to make sure that you are submitting it as soon as it opens.

Michael: Yeah, okay, that makes sense. And then, after the land rush period, it then goes to general availability, so that is just regular pricing. You go to your favorite registrar, you type in the domain name with the extension, it comes back and says maybe it is available or maybe it is not. If it is available, they give you the pricing. That is general availability pricing.

Daniel: Yes, that is where the chaos begins.

Michael: And why do you say that, Daniel?

Daniel: Depending on what type of business you are, we have seen a lot of people trying to exploit the new system by squatting on domains. The reason being is some people think just because a trademark owner has not secured a particular domain, say it is WhatsApp.CapeTown, they think that that means they can register it. They normally come back, if we send a seize and desist to them, and say, “Well, it was available. They did not take up the domain, so we decided to register it.” And many people feel that they have lost out on the .COM land grab, so now they have different TLDs to focus on and do that in.

Michael: Yeah, exactly, and it is rampant in countries where intellectual property law is not as strong as in the United States or the European Union. So, you could have a person register WhatsApp in China for a new top-level domain. You can send them a seize and desist letter, but China does not protect intellectual property as strong as the US does, so you are almost out of luck, sending them a seize and desist letter or trying to file a legal action in the United States.

Daniel: Well, not necessarily because the UDRP governs all new gTLDs. So, it is a little bit different to country code top-level domains (Unclear 44:02.6), which can get a bit difficult to litigate in, but with the new gTLDs, you can go by the UDRP. So, you can file a complaint at the National Arbitration Forum in Minnesota and if you are successful, then you can get the transfer of the domain. So, jurisdiction will not really play a role in it. What may play a role is if they use the Chinese registrar and the language of the agreement is Chinese. You would have to file a complaint in Chinese. So, you may have to do that, but at least you do have a mechanism available to recover your domain name.

Michael: Yeah. So, if What’s App did not file the Protected Marks List and somebody in China registered WhatsApp.webcam, let’s say, and they used a Chinese registrar that was in Chinese, What’s App or Facebook, I guess, could file a UDRP or URS, and if you are not familiar with those, you can search on Domain Sherpa for UDRP and URS and find out more about that legal course of action that is administered by a few different bodies, including the National Arbitration Forum, and for a certain amount of money, plus legal fees, they can have a panel of one to three lawyers review this case and determine if somebody is cybersquatting. It is taking advantage of their trademark.

And you are saying that if it is with a Chinese registrar, they would need to file the UDRP and have it translated into Chinese as well in this particular case?

Daniel: Well, depending on what forum you choose, if you choose WIPO, they tend to allow you to argue to have the complaint heard in, say, English. Say, if you were corresponding with a cyber squatter and he was replying to you in English, the website was in English, you can argue that he had a sufficient understanding of the language so that you can communicate in English and it would prejudice you to file in Chinese. But with the National Arbitration Forum, they do not allow you to do that, so you have to file the complaint, put the argument in there, but you still then have to submit a Chinese translation.

So, there are services out there that translate them into Chinese, so it adds to the cost, but it is possible still to file.

Michael: That makes sense. All right. Well, I think we have gone through the entire process from trademark to protecting them. It is sort of a risk assessment. Whenever I think of attorneys, they are always going to take the most conservative path to any type of legal issue I have, unfortunately, because that protects them and it protects the client, but basically in any risk assessment, you want to identify the hazards, analyze and evaluate the risk of that hazard, and then determine appropriate ways to eliminate or control the hazard.

In this case, if WhatsApp is the trademark, nine hundred new top-level domains plus going forward are the hazards, cyber squatters could register them, and then analyzing all the new top-level domains and figuring out which ones are most likely to add confusion, to allow a cyber squatter to get benefit from your trademark is what needs to be analyzed, and then determining ways to eliminate it. We talked about filing with the Trademark Clearinghouse, which notifies anybody that is registering domain names that there is a trademark, so notification is step one. Blocking them with these Protected Marks Lists that you described. Registering any domains that are not on the DPML list during the sunrise period and getting those out of the opportunity for cyber squatters to register, and then monitoring domain names.

Let’s say I own Domain Sherpa. The Trademark Clearinghouse is only going to notify me when somebody registers an exact match, but what I wanted DomainSherpaCN.com and I wanted to be notified if my trademark was being used within a domain name. Are there services to use to monitor that as well, Daniel?

Daniel: Yes, companies like Lexsynergy and other brand protection companies do offer watch services like that, which go beyond the identical match, but like you say, it would be a word incorporating your mark, so DomainSherpaDomains.com, sometimes even a misspelling on the qwerty keyboard. All the common misspelling. The WW before the mark. Some people register that without the dot, so if someone mistypes it very quickly in a browser, they can go to another site. So, there are search and watch services that they can subscribe to.

Some of them can be expensive, but it is good to know what is out there and at least you can then make an informed decision of how you will tackle these disputes. And also, I think keeping up to date with the new gTLD program, as it develops, we will see which TLDs are popular. As you can see now, .CLUB has become very popular. Others such as .HIV has only got about three hundred registrations, so you would look at that and say, “Well, that is relatively low risk. I am not going to focus on that particular TLD,” and then as time goes on, you would see which ones are performing and then those are obviously high risk ones and you can maybe focus on those as opposed to just trying to get out there and register everything, which is impossible.

Michael: Yeah. And if you go to Google and you type in ‘NTLD Stats’, it will take you to a website.

Daniel: Yeah, I think it is NTLDStats.com.

Michael: That will give you all the number of registrations to date by TLD, so you can quickly get a feel for which ones might be of concern and which ones probably are not of concern, so that is a great point. Daniel, that is the seven-step process that entrepreneurs, business owners, and trademark owners need to be aware of. Did I leave anything out? Are there any final pieces of advice that you have for trademark owners as they are looking forward towards these launches and need to protect their intellectual property?

Daniel: I think it is very important that they are proactive, that they are keeping up to date with the system. If they do not have trademarks, to speak to an attorney to at least structure that so that they have that protection mechanism available to them. And also, as the program evolves, keeping and making sure that their applications or submissions are suitable, that they do not go overboard because we have seen it with a few clients and also in the media. I think it was with the Mayor of New York with .NYC. He went crazy, registering all these variations, and that was a publicity nightmare. So, just being conservative in the approach.

Obviously, like you mentioned, no attorney wants any risk, so they will tell you to register as much as possible, but really you need to be sensible about the whole process, and I think common sense must prevail.

Michael: Yeah. And if I do have an intellectual property attorney that files my trademarks and my patents, is that attorney necessarily the best one to manage my domain name, intellectual property as well?

Daniel: Some brand owners like having their trademark attorneys involved just because they have a broader outlook on intellectual property and they know where their trademarks are sitting and what they need to do to prevent or to mitigate the risk. So, they will be familiar with their risk. So, if they mitigate a lot in Chinese, they will say focus on the Chinese IDN extensions, and they can provide that invaluable advice in developing a strategy, like we do. We sit down with a client. We do not just randomly say register this. We give them a list and say to them, “This is what you need to do, this is how you go about it, and this is what you should focus on.”

And I think you do need that input, but it also comes down to a cost. There is a premium sometimes that is charged if you do go through an attorney.

Michael: Yeah. I guess the point that I was trying to get at, which I will just say because I am sure that you are trying to be politically correct, is that not all attorneys know about domain names and how the process works. I do not necessarily want to have to pay for my IP attorney to learn the Trademark Clearinghouse process, to learn the Protected Marks List, and to understand the tools that are necessary to track new domain name registrations, even in .COM, to notify me, like you can use at DomainTools.com. So, there are tools out there. There are processes out there. Clearly you are intelligent on this process and well spoken. So, I am not giving a pitch for Lexsynergy, but you can do that. You can work with an intellectual property attorney that I may have that does not have that expertise and focus on the things that you know best.

Daniel: Exactly. And I think the domain name industry is evolving and if someone is not keeping up to date with it, as maybe some attorneys are not, then it could lead to some issues or higher costs. So, there are services like ours and others that you can use to try and at least minimize that cost and get professional advice.

Michael: Yeah, great. If you are watching this show and you have questions about trademarks and protecting them with respect to the new top-level domains that are coming out, please post your questions in the comments below this video on Domain Sherpa and I will ask Daniel to come back and answer as many as he can. I also encourage you to take a moment and post a quick thank you to Daniel in the comments or use the button below to thank him on Twitter. I am going to be the first to do so right now because I have learned a lot during our hour conversation, Daniel, and I really appreciate you walking us through your seven-step process.

Daniel Greenberg, Director at Lexsynergy Ltd. Thanks for coming on the Domain Sherpa Show, sharing your insights of how entrepreneurs can effectively and cost efficiently protect their brands, and thanks for being a Domain Sherpa for others.

Daniel: Thank you. Thanks for having me.

Michael: Thank you all for watching. We’ll see you next time.

Watch the full video at:
http://www.domainsherpa.com/daniel-greenberg-lexsynergy-interview/

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9 Responses to “7 Steps to Protect Your Trademarks from Domain Name Cybersquatters”

  1. John says:

    Maybe they dont care. I batch registered a bunch of .enterprises domains. And I got 4 of the Forbes 500 enterprises companies in the batch.

    I observed the TM and created accounts with my registrar and pushed the domains to their respective accounts and informed them through their current whois info.

    The only thing they needed to do was to confirm the change of contact details which never happend, except in 1 case out of the 4, and after 3 months they went back to my account. And that is exact matches of (company).enterprises

    So, either they have a domain crew that lack knowledge of they just dont care.

  2. Jay says:

    great show mike
    I have a question for the panel. Andrew Rosener is brokering BigData.com for $6,000,000
    but estibot has an Appraisal Overview of $10,000
    what makes this a $6,000,000 domain when Data.com was sold for less than $3,000,000

  3. PalmBeach says:

    As a domainer I have had a number of my domain names trademarked long after the domain names were registered for future development.

    I have a few questions on trademark granted for exact match domain name registered 5 years before trademark was filed. (Both Trademark and Domain owner are currently competing in the same space)

    1. Trademark Owners: What rights/restrictions do Trademark Owners have on the Domain Owners use of a domain name that was not registered in bad faith?

    2. Domain Owners: What rights/restrictions do Domain Owners have once someone has been granted a trademark on an exact match domain that was not registered in bad faith?

    What other legal ramifications do Domain Owner and Trademark Owner need to be aware of.?

    Thanks for your help… Love the show :)

  4. KC says:

    Thanks for the interview, gentlemen. My question is about jurisdiction and its relevance to UDRP.

    Say, you are in Germany and run a LOCAL business called Do It Now. You have registered a TM only in Germany on the term “Do IT Now” in the area of business consulting and you run your business on DoItNow.guru. Someone in Thailand saw your idea, liked it, and so registered DoItNow.com using Godaddy which is located in the US, and uses it to run a affiliate program riding on your reputation.

    Now, is it correct to say that you can still file a UDRP against the .com owner even if your TM does not cover beyond Germany and the .com owner is in Thailand?

    In other words, to file a UDRP claim, you just need to prove you have a valid TM or common law mark (they can be local). The location of your business, the offending registrant’s location, the location where the offending .com is registered do not matter. Correct?

    1. Yes, you could rely on your local mark. Jurisdiction is not an issue as the infringer is targeting your business.

      In order to succeed in a UDRP complaint you will need to prove ALL three elements below:

      1. The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

      2. The registrant does not have any rights or legitimate interests in the domain name; and

      3. The registrant registered the domain name and is using it in “bad faith”.

      If the registrant in the example is targeting your business then your chances of success are high.

  5. albert says:

    I guess this would not apply to very many generic domain names.

    Mike, I was wondering if you were going to do a show with the Sherpas about their domain name reviews at Names Con and their take on Names Con altogether?

    Thanks,

    Albert

  6. Tom says:

    Awesome show. Well articulated and put together. Thank you, Daniel and Michael!

  7. Shaun says:

    Thanks for the upload!

  8. Nick says:

    If I had a Trademark for lets say clothing, I’d much rather spend money protecting my Trademark for related .com like MyTrademarkClothing.com, MyTrademarkJeans.com, MyTrademarkBelts.com, MyTrademarkHats.com, MyTrademarkApparel.com, MyTrademarkShirts.com and so on. Rather than waste money on 95% of the new TLD’s , I’d want no part in giving them money and hope they’d just fail.

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