Other Intellectual assets

Adapting brand strategy for generic top-level domains

April 17, 2014

First published in Watermark Journal Vol. 30 No. 4

New generic top-level domains (gTLDs) will soon be added to the domain name system. In addition to gTLDs such as “.com” and country code top-level domains such as “.com.au”, users will be able to register domain names such as “yourbrand.clothing” and “yourbrand.melbourne”. These changes present both opportunities and threats to brand owners, so it is important to be aware of how these developments will affect your business.

The Challenge

As a protection mechanism it is generally uneconomical to yourself register all domain name combinations for your trade mark.

Deciding whether to assert your rights against third parties who are using a domain name which incorporates your trade mark will depend on a variety of factors such as the importance and value of the trade mark to your business, and whether your trade mark is being used on the third party’s website. You may choose to tolerate ‘parked’ domain names, or the legitimate use of “yourbrand.net.au” for unrelated goods or services, if your website located at “yourbrand.com.au” is optimised to receive maximum internet traffic.

However, if you have invested heavily in securing multiple domain names in numerous countries, the thought of third parties registering your key trade marks as part of new gTLDs is likely to be concerning.

IAM Strategy – The Trademark Clearinghouse

In the new gTLD ecosystem, one mechanism for protecting brand owners is the Trademark Clearinghouse (TCH), a central repository where brand owners can have their trade marks verified to give certain benefits, including:

  1. the ability to register their trade marks as part of new gTLDs during a ‘Sunrise Period’ prior to the release of a new gTLD to the general public; and
  2. the option of being notified when a third party registers a domain name corresponding to a trade mark verified by the TCH.

For example, the Sunrise Period for the release of the “.clothing” gTLD was 26 November 2013 to 24 January 2014. Brand owners, particularly clothing brand owners, with registered trade marks verified by the TCH prior to the Sunrise Period had the opportunity to register “theirbrand.clothing” before 24 January 2014, after which the gTLD was opened to the public. If there are competing claims lodged during this period, there will typically be an auction between trade mark owners – the highest bidder winning.

Even if the trade mark owner decides not to take advantage of the Sunrise Period to register their own domain name, the owner will be notified of any third party registering “theirbrand.clothing”. This notification, which is also given to the registrant, enables the trade mark owner to act promptly if the domain name is of concern. Such action would include filing a Complaint through the Uniform Domain Name Dispute Resolution Policy (UDRP) or through the new cheaper, faster Uniform Rapid Suspension System (URS) in straightforward cases.

Summary

Brand owners need to be aware of the opportunities and risks associated with the release of new gTLDs. If securing registration of core trade marks as domain names during Sunrise Periods aligns with your branding strategy, or if obtaining additional market intelligence of domain name registrations is desirable, then submitting your key trade marks for verification by the Trademark Clearinghouse will help mitigate the risk of misappropriation of your trade mark by others.

On the other hand, if holding numerous domain names is not a part of your strategy, then be aware that new gTLDs are coming to the internet and put in place appropriate strategies to manage the risk of trade mark misappropriation. You should monitor new domain names through either internal or external surveillance mechanisms and take appropriate action on a case by case basis.

By Sean McGuire

branding   IAM   protection   trade marks

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