In an unusual configuration of topics, some important brand protection questions have arisen due to the purchase of two x-rated domain names by pop star Taylor Swift.
As recently reported, Swift has registered taylorswift.porn and taylorswift.adult, both of which are new domain extensions soon to become available due to a massive expansion of the internet's Domain Name System. Given Swift's wholesome image, it's fair to assume these are defensive registrations - that is, they were registered in order to prevent someone else from registering them, rather than for any actual use.
The expansion of domain names (on top of the familiar .co.uk or .com, there now are hundreds of new options, such as .shop or .hotel) raises a dilemma for those seeking to protect their brand online. The common wisdom used to be to buy your brand name in the country-codes of the countries you planned to operate in (e.g. .co.uk) and, if possible, in the most common top-level domains - .com, .net and .org - to avoid somebody else securing them. However, given the hundreds of new domain extensions, and the possibility of thousands more, it's now simply not viable to register them all.
Brands do have legal recourse if someone tries to use their trade mark in a domain in order to confuse consumers and/or make money out of the reputation of that brand. In our role as the .UK domain name registry, Nominet has considerable experience in domain disputes. Since it was established in 2001, our Dispute Resolution Service has seen over 10,000 cases. As a recent example, a man using the domain name "ilovealdi.co.uk" for an online shopping website was ordered to hand over the domain to the German discount giant. The Dispute Resolution Service expert found the respondent was seeking to take unfair advantage of someone else's reputation in order to make a profit. (The respondent maintains that the site was simply an expression of his genuine love for Aldi.)
In essence, it's about weighing up the registration costs and the potential risk of not registering, which will vary between brands and domains. In some cases, it might be easier to avoid the risk of a potentially time consuming dispute later on. But in most cases - unless you are a pop star with a net worth of $200 million and an enviable online presence (100 million single downloads, over 55 million twitter followers...) I would advise that an aggressive defensive domain registration strategy across all new domain extensions is probably unnecessary. Brands should consider selectively registering in the extensions that are most relevant to them, but for most it's unlikely to be worthwhile bulk-buying domains they don't want simply to block them. Brand owners have been granted additional remedies as part of the expansion process. While there have been some disputes - such as that over playboy.london, between Playboy magazine and a London property developer who considers himself a playboy - the new domain spaces have not (yet) given rise to wholesale cyber-squatting.
One upcoming domain extension that has been gaining particular attention in the brand protection space is ".sucks". It's unlikely that brand owners would have a case against someone using their name if it wasn't being used to confuse or make profit, but simply to host a critical website - which is what the ".sucks" domain lends itself to. With its unusually high registration fees for trade marks of $2,500 USD (a .co.uk domain costs around £5 a year), the company behind .sucks is being accused of trying to "exploit trade mark owners" by charging them "exorbitant" sums to register their .sucks domain, in order to prevent it being used as a complaint site.
Again, unless you want it for a specific purpose, it's probably unnecessary to spend that amount securing the .sucks domain for your brand. Buying yourbrand.sucks isn't going to prevent criticism of your brand on the internet. For a start, people could register yourbrandreally.sucks, or yourbrandsucks.com. As many brands will testify, you can't prevent people from voicing criticism on the internet - and it's quite legitimate for them to do so. In these instances, it may be best to take some different advice from Ms Swift, and "shake it off".