Company cites global domain name protection as risk in S-1.
Ancestry.com has filed to go public. It’s another example of a great business built on a generic, category-killer domain name. But in its S-1 filing with the Securities and Exchange Commission, the company cites challenges acquiring country code domain names as a risk:
If we are unable to protect our domain names, our reputation and brand could be affected adversely.
We have registered domain names for website destinations that we use in our business, such as Ancestry.com, Genealogy.com and myfamily.com. However, if we are unable to maintain our rights in these domain names, our competitors could capitalize on our brand recognition by using these domain names for their own benefit. In addition, our competitors could capitalize on our brand recognition by using domain names similar to ours. Domain names similar to ours have been registered in the United States and elsewhere, and in many countries the top-level domain names “ancestry†or “genealogy†are owned by other parties. Though we own the “ancestry.co.uk†domain name in the United Kingdom, we might not be able to, or may choose not to, acquire or maintain other country-specific versions of the “ancestry†and “genealogy†domain names. Further, the relationship between regulations governing domain names and laws protecting trademarks and similar proprietary rights varies from jurisdiction to jurisdiction and is unclear in some jurisdictions. We may be unable to prevent third parties from acquiring and using domain names that infringe on, are similar to, or otherwise decrease the value of, our brand or our trademarks or service marks. Protecting and enforcing our rights in our domain names and determining the rights of others may require litigation, which could result in substantial costs and divert management attention. We may not prevail if any such litigation is initiated.
Although category killer domain names like Ancestry.com can be great for launching a business, this risk highlights a downside: it’s particularly difficult to protect your brand. Ancestry isn’t a trademark by itself, so persuading an arbitrator or judge to hand over the domain (or even a similar one) in a different top level domain could be tough. Hotels.com is struggling with this same issue.
David J Castello says
If they’re this worried about ccTLDs they’d better have the Maalox handy when the vanity gTLDs are unleashed.
gpmgroup says
There are some worrying notions as to their rights to other people’s property above.
A business built around a generic domain such as ancestry.com or hotels.com and offering goods and services in ancestry and hotels respectively, should not awarded a trademark for their name.
The reason is simple because they will use those trademark to harm genuine competition.
determining the rights of others may require litigation sheesh – how nice of them.
If they want legal protection for their business marks choosing a category defining domain name to build their business around may not be the brightest approach.
If I build a build a business around deadoldgits.com and it becomes wildly popular through my skill, innovation, marketing and good business skills. And then some johnny-com-lately registers any variations of deadoldgits.ccTLD or dead-old-gits.com etc and posts a PPC page then I should have redress irrespective of whether or whether not I have a trademark for deadoldgits.com
But if you go out and buy ancestry.com looking to build a business around generic ancestry traffic you should not expect to be allowed to exclude others looking to do the same with other domains, whether its through trademarks or through the courts.
Ian Cantwell says
Madonna was successful, regardless of the generic definition of her name. So it is possible for such people and companies to get unique legal rights, whether they deserve to or not.
gpmgroup says
Madonna’s Mark is for Entertainment services and related goods. In the same way Apple Computer, Inc uses “apple” as a brand for computer goods and services.
Where as hotels.com and ancestry.com both offer goods and services based around the generic meaning of their respective domain names.
UDRP doesn’t just hinge on the possession of a trademark it also considers legitimate use. If an apple farmer was happily selling apples at apple.com the Apple computer company although very famous shouldn’t be able to use UDRP to take the name away from the farmer. For example as in http://www.nissan.com where Nissan Motor Company failed to acquire nissan.com from the Nissan Computer Corp.