Despite losing objection, Express still has plenty of ways to tackle the .express top level domain.
American clothing retailer Express (NYSE: EXPR), which has a market cap of close to $2 billion, has lost its Legal Rights Objection against Donuts over the top level domain .express.
Kevin Murphy has a good write-up explaining the decision.
Express has also applied for the .express top level domain. That means it has many options to resolve its concerns about brand damage from .express being allocated as a top level domain.
Why did Donuts apply for .express?
Donuts’ new top level domain applications are basically template responses that don’t shed much light on who the company plans to target or market its domains to. So it’s unclear exactly who it has in mind for registering these domains.
Delivery services? Fast-turnaround companies? Anyone and everyone?
It’s hard to say.
Express pointed out that Donuts also applied for .coach and .limited, which also happen to be fashion brands and generic terms at the same time. The fashion brand Coach also applied for .coach and filed a Legal Rights Objection against Donuts.
While there are clear uses for each of these domains that are not related to the brands, naysayers could argue it’s an attempt to extract money from the brands.
Obviously, these brands may feel the need to register certain domains if Donuts gets the top level domain. They might have to compete with others to get the domains, too.
Shirts.express, for example, would not be covered under any sort of sunrise of trademark clearinghouse. (You also have to wonder if people will want to change how UDRP works for a domain like shirts.express if the registrant is clearly targeting the clothing retailer.)
With this in mind, here are 5 ways Express can resolve its issue.
1. Beat Donuts in an auction of last resort with ICANN.
This is the option Express will take if it feels like it’s being extorted and doesn’t want Donuts to see a dime.
The ICANN auction will award the domain to the highest bidder between the two. The losing party will get only a partial refund of its application fees.
2. Beat Donuts in a private auction.
A private auction gives most of the proceeds to the losing party. It’s basically paying your competition to go away.
Donuts has participated in six private auctions so far and only won one of them. So it clearly has a value pegged to each of its domains, and won’t pay more than that to run the registry.
I would think .express would have a lower value than many of the domains Donuts has already passed on, and many of those auctions likely ended at less than $1 million.
Of course, if Express doesn’t win a private auction it at least walks away with some cash – not that it will be meaningful to the company.
3. Make a buyout offer.
This is similar to a private auction. Basically, Express could go to Donuts and say “Hey, if we pay you $x will you withdraw your application?”
4. Work out an intellectual property protection deal.
Would Express really be hurt if domains such as fooddelivery.express, Fedex.Express, or xrays.express are registered?
No. There’s a subset of domains that are important to Express. Obviously anything related to fashion or clothing would be on the list. Perhaps some geographic second level domains as well. You could also see its interest in customerservice.express, returns.express, deals.express, etc.
The list might be long, but it’s not infinite.
Express could work out a deal with Donuts whereby Donuts runs .express but the clothing retailer gets rights to certain domains.
Express could sue Donuts or ICANN (despite waiving some claims of liability) to try to halt Donuts’ application or its ability to offer registry services for .express.
You never know what a judge might decide that could change the value of the domain to either party. It could also result in a settlement – a result similar to some of the other resolutions.