DEFENSIVELY PROTECTING BRANDS VIA DOMAIN BLOCKING

So, you’ve gone to the trouble of obtaining valuable registered trademark rights. And, as most businesses in today’s Internet-drive business world, you’ve registered a domain name which incorporates the registered trademark/brand.? What if a third party registers a similar domain name for malicious and nefarious purposes? ?For example, a third party may wish to piggyback off of a recognized/known brand by creating confusion in the on-line marketplace.? ?In other cases, a bad player may set up an offensive website to try and tarnish the brand’s reputation and goodwill. ?Or they may be engaging in cybersquatting in hopes of getting you to pay a hefty fee to acquire the domain name.

Several years ago, the author represented a client which had developed a lucrative business providing customized products for high-end homes. Our client had only registered the plural form of the brand.? A local competitor registered the domain name afterwards for the singular form of the brand.?

We utilized the Uniform Domain-Name Dispute Resolution Procedure (UDPR) established by the International Corporation of Assigned Names and Numbers (ICANN), a nonprofit organization that coordinates the global Internet's system of unique identifiers. As a result, the singular domain name was transferred to our client. ?We would then routinely advise clients to obtain singular and plural forms, obvious variants of their domain names, and extensions beyond the typical dot.com extension as a precaution.? That is, clients were advised to take defensive action against bad players by registering at least the closest domain name variants to the brand’s “main” registered domain name.

ICANN defines defensive domain registration as the practice of registering domain names, across multiple TLDs and in varied grammatical formats, for the primary purpose of protecting intellectual property or trademarks from abuse, such as cybersquatting. ?Since that UDPR case, the number of domain extensions has drastically expanded with the advent of ccTLD, gTLDs, and Web3 (the metaverse) extensions.? As such, the cost of registering domain names as a defensive tactic can become cost prohibitive for small companies in particular.? Moreover, with the newer extensions, brand owners are not always able to meet certain eligibility requirements for a variety of reasons.

Enter domain blocking as a potentially more affordable and effective mechanism of protecting a brand owner’s primary trademarks in the Internet arena.? Domain blocking is a security measure that restricts access to specific domain names on a network.? Here, authorized brand owners can use domain blocking to prevent the unauthorized registration of specific confusing names and/or variants of the trademarks.? The most recent innovation in domain blocking is GlobalBlock which officially launched on February 29, 2024 through the Brand Safety Alliance (BSA).? The BSA is a coalition of companies and organizations that work together to address issues related to brand safety in the ubiquitous digital advertising world. ?In contrast to older domain blocking services, GlobalBlock covers a wide range of gTLDs, ccTLDs and Web3 extensions across multiple registries.? For more information on GlobalBlock’s services, see www.globalblock.co. ??

In conclusion, two approaches are available to brand owners to protect the on-line reputation and monetizing of their brands. Whether by domain blocking or defensive domain name registration, brand owners should be prepared to protect their brands as valuable business assets. ?This applies to small and growing businesses as well wherein a strategy should be implemented based on their financial resources at the time to take reasonable steps to protect their brands in cyberspace consistent with their growth strategy.? Consider brand protection as a cost of doing business in today’s on-line marketplace.

Enjoy this article and want to know how you can protect your IP including brands? Contact Susan Troy at 305-279-4740 for legal matters involving all types of intellectual property.? We are here to serve you and answer your questions related to intellectual property. Check Susan's reviews at www.avvo.com and www.linkedin.? Susan is a registered patent attorney.??

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