Guest post from Matt Sammon, head of UK trademark practice at Marks and Clerk.
Over the last six months we have seen a big change in the shop window of the internet. Over two years ago ICANN (the Internet Corporation for Assigned Names and Numbers), the body responsible for assigning top-level domains (TLDs), announced a programme expanding the number available by a potentially unlimited amount.
Until recently web addresses had to fit with the www.insert-word-here.tld format, with the TLD normally associated with a country, such as .co.uk for the UK or .fr for France. Other TLDs are limited, but do exist, for example.net, .org or .gov.
But things have now gotten much more complex.
Since October last year, ICANN has been delegating generic TLDs (gTLDs) based on words, brands, locations and non-English language characters. The first delegated were the Chinese for "games", the Russian for "site", the Russian for "online" and the Arabic for "web/network". Since then we’ve seen everything from .berlin to .properties to .neustar.
Following delegation, it is down to the registries that have been awarded the gTLDs to manage the rest of the process. We have already seen sites appearing with the new gTLDs – republic.bike, schlitter.bike, pamporovo.bike – but more will come.
With the new opportunities presented to marketing departments by these new gTLDs come new risks – particularly of domain name squatting. Domain name squatters are a risk to companies, as someone might pose as your brand and attempt to sell counterfeit goods or services. Alternatively, they could host inappropriate (for example adult) material on a site and discredit a company’s name.
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Brands normally defend against squatting threats through two means: defensive registrations (purchasing web addresses to prevent others from doing so first) or using ICANN’s Uniform Dispute Resolution Service (UDRS). In 2000 Madonna used the UDRS to obtain www.madonna.com, which had been registered by an adult website operator in New York. Any business with trademark rights can use the service, with fees starting from $1,500.
So how will it work with the growing range of new gTLDs?
With a $185,000 price tag, relatively few companies have actually applied for their own .brandname gTLD. So far we’ve seen the Korean for "Samsung", .monash (for Monash University, Australia) and just a few others delegated.
But it’s not the actual gTLDs that companies are worried about – it’s the potential for domain name squatting that comes with each new gTLD. If before a company was concerned by the risk from www.itsbrandname.net, www.itsbrandname.com and www.itsbrandname.co.uk, now it’s at risk from potentially all the new gTLDs.
No company will want to buy the addresses corresponding to its brand name for every new gTLD out there, so ICANN has created a specific body to ensure that registered trademark owners can prevent abusive web address registrations: the Trademark Clearinghouse.
The Trademark Clearinghouse is a repository of trademark information. Rights holders can submit their trademark information to the Clearinghouse which will give them first refusal on addresses (domain names) with any new gTLDs being launched.
If they opt not to purchase the domain name and if a third party then attempts to register a domain name which matches a trademark term recorded with the Clearinghouse, ICANN will notify the third party of the registered trademark rights. Should the third party continue with the registration despite receiving the notice, the rights holder will be notified and then have the opportunity to take appropriate action against a potential infringer or trademark squatter through the UDRS.
Companies need to proactively submit their trademark information to the Trademark Clearinghouse to benefit from its services, but the process is simple and the price is low, as unlike the gTLDs themselves the Trademark Clearinghouse is intended for businesses of all sizes.
The new gTLDs create opportunities and risks, but fortunately we can relax, thanks to the Trademark Clearinghouse.
In the meantime you might be curious about what new gTLDs we can expect to see over the coming months. Although not all yet accepted by ICANN, here is a selection:
– .computer
– .business
– .review
– .microsoft
– .skype
– .tech
– .cisco
– .cloud
– .hiphop
– .london
– .and
– .scot
– .condos
– .farm
– .tattoo
– .sexy
