By Sepal Bonni
The Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit organization that governs the Internet’s domains, has recently began rolling out over 1000 new domain name extensions to join the group of 20 that previously existed, the most common arguably being the .com domain name extension. At the time of this writing, a wide range of new domain name extensions have already been introduced, and ICANN will continue rolling out various domain name extensions during the coming months. Advocates of the expansion feel that with the over 100 million .com domain names currently occupying the Internet, the space for new legitimate organizations is limited. This often forces organizations to hyphenate their domain names or change the domain name extension in order to fit into an overcrowded marketplace. Some of these new domain name extensions, such as .ngo, may increase in popularity and bring about potential new opportunities for organizations to market their services to the public. However, some of the other new domain name extensions, such as .sucks, may put the reputation of an organization on the line. In this regard, organizations, in particular trade-mark owners, will be faced with the decision whether or not to register domain names that are most relevant to their operation, or perhaps defensively register the riskiest in order to protect their brand.
Despite this range of potential new domain names, this article will focus on two new specific choices for non-profit organizations (“NPOs”) — whether to add a sector specific .ngo domain name and whether to defensively purchase a domain name (such as .sucks) to protect your organization’s brand identity. This second choice is also relevant to for-profit organizations. After discussing these two choices, the article will briefly comment on the benefits associated with implementing a domain name strategy to protect your online presence.
- .ngo and .ong Domain Name Extensions
Some of the domain name extensions that have already launched which may be of interest to NPOs include .foundation, .gives, .church, .vision, and most notably .ngo and .ong.
As of May 6, 2015, .ngo and .ong domain names became generally available for use by, non-governmental organizations (“NGOs”), including not-for-profits and charities, in Canada and around the world. Prior to this date, organizations which had already submitted an expression of interest prior to April 21, 2015 were given priority to reserve their new domain names. From this point forward, names will continue to be allocated on a first-come, first-served basis.
These new domain names provide a unique way for NPOs to portray and distinguish their work online. Public Interest Registry (“PRI”), the non-profit registry that has administered the new.org domain name extension for the past decade, launched the .ngo and .ong domain names in response to concerns from the sector about the need for a closed domain which would help donors immediately know if a website was legitimate and, therefore, feel confident in supporting the organization. The eligibility requirements are designed in a way to help the public make good, trusted choices online regarding donations.
PRI launched the .ngo and .ong domain names in conjunction with its new global OnGood directory of NGOs, after several years of global research involving meetings and events with stakeholders in the sector. Organizations that qualify for and purchase the new domain names will receive both a .ngo (for English users) and .ong (for Romance languages, including French and Spanish) domain name as well as an annual membership to and customizable online profile page on the searchable OnGood directory. This profile allows charities and not-for-profits to showcase their work, collect donations, and link to their other online and social media presence, such as LinkedIn and their organization’s direct website. The database is meant to have a global reach and create a community of like-minded organizations. It is written in English, French, German, Portuguese, and Spanish, and currently accepts donations in 80 currencies.
Because credibility and donor trust were two significant factors in the push to create the new domain names, PRI has established a validation process that organizations must complete before they can register a .ngo or .ong domain name. Unlike the .org domain name, which can be used by individuals, not-for-profits, or corporations, in order to qualify for a .ngo and .ong domain name, potential registrants must self-certify that they meet seven eligibility criteria. Additionally, the registrant must provide either a registration number, if it is already registered with a NGO or charitable body, such as Canada Revenue Agency, or a supporting letter of reference if no such documentation is available. The seven eligibility criteria require that the organization:
- Focuses on acting in the public interest,
- Does not recognize profits or retain earnings,
- Has limited government influence,
- Has staff/members who are independent actors and are not parts of political parties,
- Actively and regularly pursues its mission,
- Operates in a structured manner, and
- Acts with integrity within the bounds of law.
PRI will conduct regular reviews to ensure that organizations with a .ngo or a .ong domain name continue to meet the eligibility criteria.
The new .ngo and .ong domain names provide an interesting new opportunity the NGO community to further establish their online presence and portray themselves to potential donors in a new light. Already, within the first two weeks of availability, over 500 organizations were profiled on the OnGood directory and over 1400 .ngo and .ong domain names were registered. Some of the large-scale, widely recognized organizations that are currently listed on the Ongood directory include: the American Lung Association, the Sierra Club, People for the Ethical Treatment of Animals (“PETA”), and World Vision International.
As the new domain names become increasingly recognizable, it is likely that donors will gravitate towards the names and that having this type of domain name will increase the credibility of associated charities and not-for-profits.
- .sucks Domain Name Extension
As the .ngo or .ong domains rise in popularity, organizations will likely see a positive effect to registering these domains. However, organizations will also want to consider registering defensive domain names, across multiple domain name extensions. These defensive registrations may include grammatical variations, misspellings, and phonetic equivalents of the domain name, and may also include domain name extensions such as .sucks. The primary purpose of these defensive domain name registrations is protecting trade-mark abuse, such as cyber squatting. These defensive registrations would either re-direct traffic back to the main domain name, or alternatively just be a parked domain name.
Recently, there has been much debate regarding the launch of the controversial .sucks domain name extension. For most organizations registering a .sucks domain name will be a defensive measure to protect their online brand identity from the risk of an outsider registering “yourcompanysname.sucks” and using that domain as a platform to, at best, dilute the brand’s online impact by conducting similar activities and creating public confusion or, at worst, purposefully negatively commenting on the organization in question.
Vox Populi Registry Ltd, the organization operating the roll-out of .sucks, has promoted the .sucks domain name as a useful means to engage in cause marketing (e.g., cancer.sucks), focussed platforms (e.g., bullying.sucks), and consumer advocacy. The third rationale in particular raises concerns from organizations that have not purchased a .sucks domain name and that are concerned about a .sucks domain name being associated with their brand. In response to this concern, block pricing at a rate of 25 percent less than a standard registration will be available on a first-come, first-serve basis to allow such organizations to register a .sucks domain name simply for the purpose of blocking another individual or organization from doing so.
Given the fact that the full impact of .sucks domain names is, as of yet, unclear, it may be beneficial for trade-mark owners, including NPOs and for-profit organizations, to consider paying the price and registering their trade-marks with .sucks in order to avoid negative repercussions associated with client and donor confusion, brand dilution, and, potentially, losing your trade-marks by not adequately enforcing them.
- Implementing a Domain Name Strategy
Although each new domain name extension option brings with it a new set of considerations, one way to potentially proactively approach this emerging new system of domain name extensions is to implement a domain name strategy. Doing so will help all members of your organization understand how you approach these matters, and, in the process, how you protect your trade-marks in the online world.
Some useful steps to consider when forming a domain name strategy include registering:
- Your brand name with the most common domains as well as any new domains that are relevant to your organizations (e.g., .com, .net, .org, and, potentially, .ngo);
- Your brand name with any domain name extension that could be used to reduce the reputation of your trade-mark (e.g., .sucks);
- Common misspellings and obvious variations on your brand name with the extensions you considered in step one;
- Phonetically equivalent domain names (e.g., if your brand name includes a number, you should register both the numerical and word versions);
- Plural and singular variations; and
- Hyphenated variations.
That said, registering the full range of domain names potentially caught within the above steps can be costly and time consumptive. In making your final selections about which domain names to register, your organization will likely have to weigh its financial resources as well as the likelihood of another organization engaging in similar activities or operating under a similar name.
The influx of new domain names in 2015 means that organizations now have a new dimension to consider in the ongoing quest to secure their intellectual property rights and brand identity. Although it will likely take a few years for the full impact of the new domain name extensions to be felt, it is in the best interest of all organizations to immediately start considering how these extensions may affect their online presence. NPOs and charities choosing to use a .ngo or .ong domain name in addition to their current domain name could be at the cutting edge of online trends, while non-profit and for-profit organizations protecting their online brand by purchasing a .sucks domain name could be taking an important risk management approach to managing their trade-marks. Whether or not taking one of these steps immediately is the right step for your organization will be based on your direct needs and resources. However, considering these issues now and at regular points in the future should be part of the internal policies of all organizations. In the modern non-profit sector, protecting your brand online is a key part of protecting your brand overall.
Sepal Bonni, B.Sc., M.Sc., J.D., Trade-mark Agent – Called to the Ontario Bar in 2013, Ms. Bonni joined Carters’ Ottawa office to practice intellectual property law after having articled with a trade-mark firm in Ottawa. Ms. Bonni has practiced in all aspects of domestic and foreign trade-mark prosecution before the Canadian Intellectual Property Office, as well as trade-mark portfolio reviews, maintenance and consultations, and is increasingly interested in the intersection of law and technology, along with new and innovative strategies in the IP world.