What to do with the domain name extensions .porn, .sucks, etc.?

May 13th, 2015

Some thoughts to ponder for businesses

PASCAL LAUZON | Montréal

The singer Taylor Swift recently acquired the domain names taylorswift.porn and taylorswift.sucks, raising questions as to whether Ms. Swift plans to expand her range of business activities. Not at all—it is merely part of a strategy to protect her image and trade-mark.

Over the past few years, the Internet Corporation for Assigned Names and Numbers (ICANN) has assigned a large number of generic top level domains (“gTLD”), some of which are certainly appropriate for business, such as .quebec, .restaurant, .club, .casino, .boutique and .lawyer, which are already available. However, a panoply of other extensions will also become available over the next few months, including gTLDs of more dubious morality such as .sucks, .porn and .adult.

More specifically, these three domain names will become publicly available on May 29, 2015 for .sucks and on June 4, 2015 for .porn and .adult (at a cost comparable to other domain names). Since the end of March and early April, these gTLDs could only be registered (for up to US$2,000 or more) by individuals and companies that had registered their relevant trade-marks with the Trademark Clearinghouse, which gives them priority in purchasing domain names from among the new gTLDs that include their trade-marks. This is to prevent them from being acquired by someone who has no right to them.

Some large companies consider this a cash grab and are refusing to play along. Instead, they are intentionally not acquiring domain names that include their trade-marks in the new gTLDs, including the shadier ones. They feel that the traditional system which includes .com, .net and .[country’s initials] works and is fair. However, others want to avoid their trade-marks being associated with questionable activities at all cost or discourage negative criticism and defamation. They therefore see an interest in obtaining the domain names using the gTLDs .sucks, .porn and .adult to prevent them from being registered and used by someone else. Several companies that have not registered their trade-marks with the Trademark Clearinghouse are expected to snap up these new domain names as soon as they are publicly available, at the risk of losing the domain to a quicker registrant.

But is that really necessary?

The costs associated with registering a domain name have to be considered: it doesn’t cost much to register a few names but to try to protect against every permutation in a world where there are several hundred gTLDs could cost a small fortune. It is understandable to want to protect oneself against unfair competition and defamation on the Internet but to do so, several other actions (including effective and inexpensive remedies which do not involve the courts) are available.

Is it therefore of any use to obtain domain names that contain one’s trade-mark with .sucks, .porn and other endings as protection? In some cases yes, but in general it’s debatable. Regarding .sucks for example, if someone wants to set up a website expressing their dissatisfaction with your company, it is not the lack of the domain name [your company’s name].sucks that will prevent them from doing so. Such a site can just as easily be set up with an infinite number of possible domain names or via a multitude of blogs or social networks. Moreover, the popularity of such a site and its indexation by search engines will likely be more relevant to how much they are visited than the fact that it is found on a .sucks. Lastly, what credibility will the public actually give to sites on .sucks? Probably none for most people.

The world of the Internet is constantly evolving and new issues arise almost daily. The fear surrounding these issues is causing some people to overreact. It is important to put these new situations in perspective and ask the right questions to determine whether action should be taken and, if so, what action would be the most effective. More often than not, the ideal solution is a duly registered trade-mark and adequate reference to it on the Internet.

Pascal Lauzon is a member of BCF’s Internet strategic team, which offers our clients strategic advice regarding their online presence. This is a continually evolving environment which calls for the expertise of a multidisciplinary team like that of BCF.