UPDATED July 15, 2015
Actor Wayne Knight (best known as Newman on Seinfeld) was forced to tweet his “proof of life” on Twitter, after a website that uses the domain name TMZ.today reported that he was killed in a traffic accident and the story went viral. It has been reported that many users credited the story of the death of Wayne Knight because it was circulated with attribution to the website TMZ.today. TMZ is well known as a major source of real entertainment news and celebrity gossip. TMZ uses the domain name TMZ.com, but the domain name TMZ.today links to an entirely different website called ebuzzd.com that is actually an unrelated, deliberately fake news website – a website dedicated to hoaxes.
Wayne Knight’s concerns aside, this story presents important lessons for trademark holders and domain name registrants: New generic Top Level Domains (gTLDs) are here and must be reckoned with. TMZ.com is not TMZ.today, but it’s a good bet that a substantial portion of the consuming public does not know that. Will the consuming public realize that your company website “XYZ.com” is not affiliated with XYZ.Today, XYZ.News, XYZ.Info, XYZ.Web, XYZ.Blog, XYZ.Corp, XYZ.Inc, XYZ.London, XYZ.Charity or XYZ.Porn, or any of the 600+ other non-branded gTLDs that are available now and coming online within the next two years?
For a trademark holder, it can be a daunting prospect to try to police that many possible confusing domain names, but there are cost-effective brand protection strategies and solutions. They begin with recognizing the issue, and making sure that you have taken all appropriate steps to protect your trademarks and domain names. The most basic step is to obtain U.S. trademark registrations for your important trademarks – especially for your primary brand. That is the key to many of the solutions that are offered at http://trademark-clearinghouse.com/, the administrative service established by ICANN to help control issuance of gTLDs. Then, set a strategy that includes monitoring the “Sunrise Periods,” during which registered trademark holders can take the most efficient steps to protect against spurious registrations of confusingly similar domain names with the new gTLDs.
The best and most cost-effective methods of protection against gTLD infringers and domain name cybersquatters will be discussed in future blog posts. Available methods include preemptive registration, blocking and various forms of policing. Conkle, Kremer & Engel routinely guides its clients to protect their valuable intellectual property and domain names, including taking proactive steps to address the new threats to trademarks posed by gTLDs. Contact us if you have questions and need assistance.
UPDATE July 15, 2015: Another example of misuse of gTLD domain extensions happened again and demonstrates that real money can change hands when gTLD domain name extensions are abused. Twitter stock jumped on July 14, 2015 after what appeared to be the Bloomberg Business website posted a news article reporting that Twitter had received a $31 billion buyout offer. The story was fake, but it passed for real news by being posted on a website designed as a counterfeit of the Bloomberg Business website and using a new gTLD: www.bloomberg.market. The real Bloomberg website is actually found at www.bloomberg.com. To help make a convincing appearance, the www.bloomberg.market website included links back to the real www.bloomberg.com website. Enough readers were fooled that Twitter stock price spiked after news of the purported buyout offer was picked up in legitimate media. gTLD confusion may continue to be a problem for trademark holders until they take affirmative steps to limit the possibilities of confusion and abuse.