Why so many brands join the UDRP club

27-05-2016

Jeffrey Sass

Why so many brands join the UDRP club

Eugene Onischenko / Shutterstock.com

The popularity of .club has led to the filing of more than 100 cybersquatting actions concerning the suffix, says Jeffrey Sass of .club Domains.

It is now two years since the .club extension was launched to the general public. Shortly before that, 454 .club domain names were registered during our trademark sunrise period by registrants including companies from Absolut to Zappos, every major league baseball team and more. The majority of the sunrise registrations were likely done purely from a defensive brand protection perspective, and such names currently do not resolve to a working web page. Others simply redirect to the brand’s corresponding .com web address. 

A small number of sunrise registrants recognised an opportunity with the .club extension to logically redirect it to a deep link within their primary website. For example, swatch.club points to the page within swatch.com that has information about the Swatch membership club. The URL for this deep link is http://www.swatch.com/en/swatch-club/about-the-club, hardly a memorable or marketable domain. In this case the .club domain serves as a useful shortcut that can be branded. If someone wants the details of the Swatch ‘club’, www.swatch.club takes them right there. It’s an intuitive and logical web address that makes good sense and is easy to remember.

This would be true for any brand with a loyalty or reward club or affinity programme. Registering the corresponding brand.club name in these cases is not just a wise brand protection move—it can also provide the brand with a useful marketing asset for an existing programme and related online content. 

Because the .club extension has meaning, it can be put to use in the context of that meaning to provide utility and value for the brand, but this is not just true of .club. One of the principal benefits of the recent expansion of the domain name system is the fact that many of the ‘new’ extensions are actually words with meaning, and in many cases they are words that have meaning for a particular business vertical.

Whether brands were awake for the respective sunrise periods or not, they should be looking at the various new domains for context and relevance to their own industry and business. It’s no longer just a legal issue, but it’s a powerful marketing tool as well. If you are in the apparel industry there are likely to be many ways in which you can benefit from using a yourbrand.clothing domain and similarly for other verticals.

"As a registry, our goal is to promote usage and ideally to get a .club name into the hands of the most logical user." 

With the advent of a multitude of meaningful top-level domains (TLDs), the concept of brand protection needs to expand beyond worrying about potential embarrassing and gripe domains (ie, .porn, .sucks, etc). In addition to those basic concerns, smart brands (and their domain advisers) need to consider registering (and logically using) domains that can enhance and simplify their online presence.

Domains that speak to your industry vertical should be an active part of your domain portfolio, and your marketing departments should be made aware of such registrations. In many cases, what the legal side considers brand protection, the marketing side can find viable use for as a brand asset.

Avoiding the UDRP

In the two years since our launch, .club has amassed more than 750,000 domain registrations, making us one of the most popular of the new domains. In addition to a solid top line registration base, .club has been the leader in actual domain usage with more than 56,000 live indexed websites across all use cases, from existing clubs, to celebrity and sports figures’ fan clubs, to entrepreneurs and start-ups with membership and subscription models, to individuals and bloggers building a community around a passion or interest. 

In addition, .club has established a strong market and aftermarket for premium names, having sold nearly $4 million in premium names since launching. The popularity of the .club extension has also seen many registrations of brand names by parties other than the brands. The result is that we have been the object of more than 100 Uniform Domain Name Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension System (URS) proceedings.

Many of the names that have gone before UDRP and URS panels could have easily been registered by the brand during sunrise (at a cost of approximately $250) or during general availability (approximately $10). In either case, the cost would have been substantially less than the most conservative cost estimate for the UDRP or URS process. 

Further, in the case of .club, with generic terms and potential fair use applications (under many circumstances a ‘fan club’ can be considered a fair use of a mark), a UDRP proceeding is not always a guaranteed slam dunk. Notably for example, fimo.club was decided against the brand owner Staedtler in favour of the registrant on fair use grounds, and cases such as liztaylor.club and skymiles.club were filed and then withdrawn. 

Recent successful UDRP decisions have included emmy.club, wal-mart.club, citi.club, lufthansa.club and astonmartin.club. All of these brands have logical use cases for a .club domain and should have considered registering the names in sunrise or shortly thereafter. As a registry, our goal is to promote usage and ideally to get a .club name into the hands of the most logical user. With that in mind, in many cases when we encounter an unregistered (including deleting domains) brand name, we have made attempts to contact said brand to help facilitate them registering it directly.

Brands with generic terms as names should also think about the value of owning their exact match names across the dot. Keyword premium names in the new extensions are far more cost-effective than their corresponding .com equivalents (if available) and in many cases are wise brand investments. For example, financial services company Lending Club recently purchased the premium domain lending.club, understanding it could have been fair game for anyone to purchase and use.

In this new age of hundreds of meaningful words as TLDs, the notion of brand protection in the domain world needs to expand to include logical brand assets. While often managed by the legal and trademark side of the house, brands should also be wearing their marketing caps while assessing the expansion of their own domain portfolios.

Jeffrey Sass is the chief marketing officer of .club Domains and has more than 30 years of experience in the technology and entertainment industries. Sass is a frequent speaker and has had several articles published. He serves on the board of the Domain Name Association. He can be contacted at: jeff@get.club 

Jeffrey Sass, .club Domains, UDRP, Uniform Domain Name Dispute Resolution Policy, cybersquatting, domain names,

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