Protecting One’s Brand and One’s Name

May 19, 2015

The old adage goes, “sticks and stones may break my bones but names will never hurt me.” Well, actually, they can, as many major brand holders are increasingly learning. Imagine a company, celebrity or politician investing millions of dollars to create and promote a product or personal image, only to have an outsider attach a derogatory web suffix to that brand name and significantly damage that investment. No imagination, however, is needed; that’s just what is happening, despite the fact that ANA and others have been warning for years about the dangers of permitting this misuse of domain names.

Since the development of the internet, the U.S. Department of Commerce has had an agreement with the Internet Corporation for Assigned Names and Numbers (ICANN) to manage the use of domain names. Many of them are familiar to us all – .com, .net, .org. But a few years ago ICANN decided to permit the use of multiple domain names that are becoming more and more familiar – like .sucks, .xxx, .porn, .adult, .wtf and others. Incomprehensibly, at this very important juncture, the Department appears to be deciding to give up its major role in overseeing ICANN’s management of the domain process, which could occur sometime next year.

Meanwhile, ICANN has set up procedures to award domain names, and it has given the “.sucks” top-level domain to a company called Vox Populi, which is charging $249 for “.sucks” registrations. But if you want to defend yourself against someone else obtaining your brand name and registering it attached to “.sucks,” that will cost you $2,499 for what is known as a “defensive” registration. Protecting against all variations of those derogatory uses can add up. At a hearing last week before the House Judiciary Committee, it was made clear that this is just the tip of the iceberg. Defensive registrations may have to be obtained in multiple languages in order to prevent global brand name harm.

Just ask Taylor Swift, who reportedly has purchased lots of variations for porn domains associated with her name. She wanted to get ahead of them becoming available in June, when others will be able to purchase these domain names and either cause her harm by using it or potentially attempt to extort payments from her to safeguard her image. And she’s not alone, as Kevin Spacey, Oprah Winfrey, and Microsoft (among others) also are reported to have bought their names in the “.sucks” domain. In 2011, the University of Kansas and other colleges including Michigan, Penn State, Missouri, Purdue, Pittsburgh, Carnegie Mellon and Indiana bought variations of the “.xxx” name. None of them are likely to use any of these names themselves, but they’re incurring huge expenses just to keep others from doing them harm.

At the House hearing, Rep. Blake Fahrenthold (R-Tex.) wondered about a politician’s exposure when he asked, “If I have to register,,,,,, you know, where does it stop?” Clearly, the growing list of potential presidential aspirants also will be faced with these issues. Indeed, brand owners and others increasingly will be asking that question unless U.S. plans to surrender involvement in ICANN oversight are slowed and adequate safeguards are put in place to prevent just such financial hold-ups.

Shakespeare’s Romeo and Juliet asks, “What’s in a name?” Brand holders are learning that hundreds of thousands of wasted dollars in defensive registrations are the price to avoid harm when some offensive domain names are approved by ICANN. It is critical that you join with ANA and others in communicating your concerns to Congress, the Department of Commerce, and ICANN itself before the transition occurs. 

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