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Would It Be Selfish to Register Calzone.Pizza?

Thomas Barrett

I was told recently that I should register the domain "calzone.pizza" as soon as it becomes available, even though our start-up has nothing to do with food.

This is a question that a lot of businesses may be facing as they become aware of the new dots that are becoming available, like .club, .nyc and .guru. Should businesses spend money and grab their brand in all of the new domain extensions to prevent potential customer confusion, or worse — cybersquatting or phishing of their brand on the internet? What if your brand can have multiple meanings? Is it ethical to prevent unrelated businesses from registering a domain that matches your brand, even though the chance of confusion is minimal?

By March 1, over 100 new top-level-domain (TLD) extensions will have launched, such as .buzz, .plumbing, and .loan. While a few global brands may have the budget to register in all of the new extensions, the reality is that most businesses have a limited budget.

How should the typical business prioritize which TLDS they should register their brand in?

  • Where the chances of cyber-squatting are highest?
  • Where there might be other companies using the same brand as yours, but for different goods and markets?
  • Only those domain extensions that complement your brand and leave the other extensions for third parties, even if this results in registrations that match your brand? (After all, this is why the new dots are being introduced, right?)

Business Case Study:

To help answer these questions, the new Calzone service provides a good case study on the different options that businesses have in registering their brand name in the new TLDs.

Calzone is a free calendar service that helps businesses and trademark lawyers analyze and schedule when to register new domain names for their business. It resides at calzone.org.

Of course, I am "dogfooding” Calzone to help us track the TLDs that are meaningful for the Calzone brand itself. And we will soon have the only registered trademark for "Calzone" in the US, which will allow us to apply during a TLD's Sunrise period. So, we can secure "calzone" in any extension we want before anyone else.

There are some new extensions that are actually a good fit, such as: calzone.news and calzone.events.

But before we start spending some money on other extensions, we need to ask a few questions.

  1. What is the risk of the Calzone brand being cyber-squatted or diluted in these new extensions?
  2. What is the chance that our target customers for Calzone will be confused by other websites using "calzone" in some other TLD for unrelated services?
  3. What about the dictionary uses of calzone, such as: calzone.pizza, calzone.food, and calzone.menu?
  4. What about unrelated third party uses of calzone, such as: calzone.agency, calzone.restaurant and calzone.marketing?

ICANN policy says we can legitimately secure these names, even if there are other companies already using the same brand name. Of course, the consequence would be to deny these bona fide businesses the use of the string "calzone" for their own use, even if they have existed for years.

The rationale for securing these names could be: While the threat of consumer confusion may be remote, it is not zero — so why take the risk?

Is this ethical? selfish? Or is it just good business?

By Thomas Barrett, President - EnCirca, Inc
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Back when the first round of new Daniel R. Tobias  –  Feb 27, 2014 7:28 PM PDT

Back when the first round of new TLDs, including .info and .biz, were introduced, there were some corporate IP people who seemed apoplectic that anybody could possibly get their precious brand name in any TLD, even for a totally unrelated purpose. For instance, there was a spokesperson for the Caterpillar construction-equipment company who was insistent that his company needed to own cat.info, etc., because nobody should be allowed to use that name for felines or something.

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