By Zak Muscovitch.

One of the great things about registering new gTLD’s is that you sometimes can find out what happened to the last guy who tried the same thing with the .com version. I am usually in a good enough mood to happily answer general domain name law questions, but my mood can change when someone spends all of $10 or whatever on a new gTLD which is clearly a trademark-infringing cybersquat, and then turns to me for advice on ‘what they should do’, or even, to ‘help them sell it’.

The explanations and rationalizations provided by such registrants of clearly infringing new gTLD domain names are sometimes amazing:

1.  It was available so I registered it.

2.  I registered it because Coca-Cola’s marketing department failed to come up with the brilliant idea, so I thought I would sell it to them for a million dollars.

3.  I wasn’t going to use it to compete with Coca-Cola.

4.  I heard that someone sold another Coca-Cola domain name to Coca-Cola for a million dollars.

5.  If I wasn’t supposed to register it, why did GoDaddy let me do it?

6.  Shoot, if I have to give up this Coca-Cola domain name, then what am I supposed to do with the other 487 Coca-Cola domain names I registered?

7.  So Pepsi.club is OK?

8.  Who is going to reimburse me for this error?

9.  Coca-cola doesn’t just mean the soft drink.

10. All I am asking for is to be reimbursed for my time and ingenuity; $150,000.00.

Now, I agree that one of the great things about domain name speculation is that for $10 it is indeed possible to buy a domain name that can be flipped one day for a lot of money. It happens. Of course, it happens more often to people who paid the $10 back in 1997 and have held on to the domain name ever since. And it happens almost never to people who register clearly cybersquatted domain names. The point is that domain name speculators who are new to the industry and who are interested in investing in new gTLD’s, should do a little homework before spending even $10 on a domain name, particularly if they don’t know what to do the next day when Coca-Cola sends them a C&D and demands the transfer. It’s not right to need $400 worth of legal work to deal with a $10 problem, especially when it is avoidable.

One thing that they can do, is check out UDRPSearch.com and enter in the key word or brand, and see what happened to the last guy that tried registering a similar domain name in one of the “legacy” TLD’s or ccTLD’s, such as .com or .eu. For example, this fellow registered Coca-cola.eu.com, despite his valiant arguments which were that;

a) the disputed domain name was available without restrictions and that it was bought legally and in good faith; and

b) the Complainant had been asked only to reimburse the cost of the disputed domain name and costs incurred, thereby making a small donation to the first Respondent’s new political party in the U.K.

Same thing happened in this case regarding coca-colalife.com, but the registrant’s arguments were even more incredible! The registrant contended that:

a) The words “coca”, “cola” and “life” predate the Complainant. The Complainant merely joined three descriptive words together. The fact that the Complainant’s mark is old and famous does not change history or the reality of the mark’s origin;

b) The Domain Names are being used in connection with a bona fide offering of design and consultancy services with no relation to the COCA-COLA mark. Almost all of the Complainant’s COCA-COLA LIFE domain names were registered after the Domain Names; and

c) Respondent has never contacted the Complainant to attempt a sale or demonstrate any intention to profit from the Domain Names.

As you can see, one of the great things about registering new gTLD’s, is that many, many .com registrants came before you, and were the guinea pigs trying out “innovative” defence arguments. Accordingly, check to see what happened to the last guy that tried registering a similar domain name.


By Zak Muscovitch.

If I was great at business I probably would have not have become an Internet lawyer. That being said, through my work, I do see a lot of successful and unsuccessful businesses, and have learned a thing or two about the domain name industry over the past 14 years. Whenever I read about the new gTLD’s, I always have to ask myself, are these morons or geniuses?

I have resisted openly commenting on the business case of new TLD’s for some time since I know so many people who are involved in them one way or another. Nevertheless, whenever I read about the new TLD’s, my immediate reaction is that for the most part, new TLD’s will never fly. I can’t help but think of other extensions such as .museum, .aero, etc., and also wonder why anybody would really want to buy a new TLD domain name. Do you really want an email address of john.smith@fresh.apricots? Will, for example, Samsung really want or need Info@Samsung.Televisions or www.Televisions.Samsung? The whole thing makes absolutely no sense to me, frankly. I just don’t see the market for nearly any of them, making we wonder whether investing in them is moronic.

But, on the other hand, when I see big money being raised, when I see very successful businessmen involved, when I see that the people behind the new TLD’s are far more adept and accomplished in business than myself, I think maybe instead of being morons for paying $185,000 per application, they are actually geniuses.

Take for example, Internet entrepreneur, Colin Campbell, whose prior successes include Tucows Interactive and Hostopia.com. He is leading the effort to launch .Club as a new gTLD. His company, .Club Domains, LLC just “won the rights to the new gTLD via the first “private auction: to be completed since ICANN began the new gTLD process”. In its press release, .Club Domains LLC also announced that it had exercised its option to complete a $7 million funding round”. Bottom line, if an Internet visionary and entrepreneur like Colin Campbell feels that .Club is worth being the successful bidder for, and that it is worth  investing $7 million in, then who am I to question his business acumen. Even though I don’t “see it”, it is likely that he “does see it”, and is therefore likely a genius rather than a moron.

Also take for example, Frank Schilling, a domain name pioneer and incredibly successful and adept businessman. He applied for a reported 54 top level domain names. Again, I don’t see the market for these 54  new gTLD’s that Frank Schilling’s Uniregistry company applied for, but he ought to know better.

Accordingly, guys like Campbell and Schilling are extraordinarily well placed to see the future of domain names, and perhaps that is what makes them leaders, because they see what many don’t. Perhaps they see business opportunities that exist apart from actually selling domains to registrants. Accordingly, I am prepared to, and want to believe, that they are geniuses when it comes to the new gTLD’s, despite my initial and current scepticism.