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New generic top-level domains are released: Reputable brand and trade mark owners beware

During 2014, the Internet Corporation for Assigned Numbers and Names (ICANN) is rolling out a series of new generic top-level internet domains (gTLDs). In plain language, this refers to the term which is to the right of the ‘dot’ in a website address e.g. www.example.com. Below we review two of the main concerns, outline the ICANN process for registration, and provide five key considerations for businesses following the launch of the new domains.

Categories for the gTLD domains will include:

  • Brand names

  • Geographic locations

  • Industries/sectors.

  • Generic words.

For example, new gTLDs like “.BIKE”, “.PARIS”, “.TECHNOLOGY”, and “.HIPHOP” have been, and will be, released on a weekly basis. Consequently there will be a dramatic increase in the number of available internet addresses. New domain registrars will be able to administer those domains in the same way as the likes of ‘.com’ is administered now.

The expansion will make it easier for businesses and individuals to register more appropriate web addresses. However, does the increased spectrum of gTLDs pose concerns for brand and mark owners?

Infringement concerns and brand dilution

The potential volume and variation of new gTLDs has led to brand or mark infringement concerns, particularly about Cyber-squatters, with who brand owners and trade mark proprietors already face a battle against domain name purchases. Cyber-squatters will often purchase domain names which include a reputable brand name or trade mark. The unknowing brand or mark owner will then be left with the options of either pursuing trade mark or passing off proceedings, which may include committing to an arbitration process with an Internet Corporation for Assigned Names and Numbers (ICANN) approved dispute resolution provider, or alternatively, or simply purchasing the domain name at a premium. Whilst paying over the odds seems unfair, the legal remedies available for a brand or mark owner to pursue mean they will have to incur costs and face inevitable evidential risks regardless. It’s not difficult to see why some aggrieved brand or mark owners simply take a commercial and pay up.

Aside from the potential increase in Cyber-squatting, brand and mark owners are worried that further consumer confusion and a dilution of brand presence are other obvious effects of the introduction of thousands of new gTLDs. It will be up to the registrar of a new gTLD to allocate a ‘second level’ or ‘sub-domain’ (the term which is to the left of the ‘dot’) and administer the process accordingly. This obligation raises its own concerns. For example, it has been reported that after the launch of the “.BIKE” gTLD in February 2014, the majority of the new domain names which referenced large brand names had nothing to do with the brand owner. Further, it was recently reported in the press that unknown third parties had already pre-reserved their interest in registering the domain names of 80% of the UK’s most valuable brand names under the “.WEB” domain. For example, HSBC.web and JohnLewis.web have been reserved by unknown entities.

The ICANN process

Trademark owners can register their marks with the Trademark Clearinghouse (TMCH). Once registered each new gTLD registry will be required to check new domain name registrations against the TMCH register and notify any trade mark owners of applications for names which match their mark.

To obtain the benefit of the TMCH a trade mark owner must register the mark with the TMCH and have it validated. Marks will receive validation if they are a registered trade mark or if a common law unregistered mark has been validated by a court or judicial proceeding at a national level.

All of the above isn’t likely to be of much comfort to businesses without a portfolio of registered trademarks or a committed team of lawyers and attorneys to manage that portfolio, notwithstanding costs.

Five key considerations for businesses following gTLD launch

  1. If you have aspirations of registering a trade mark then consult your legal advisors and trade mark attorneys immediately. A trade mark validated by the TMCH will be much easier to protect than one which is not.
  2. Trade mark owners are advised to register important marks with the TMCH. At the time of writing (May 2014), mark owners can register their mark for £92 for one year, £267 for three years or £446 for five years.
  3. It would be inefficient and expensive to seek a second level domain (the term which is to the left of the ‘dot’) for every new gTLD launched. If a new gTLD is of interest to your business then check its availability and monitor its launch date. You can then register your brand or mark with the new gTLD’s registrar as appropriate.
  4. Review your domain name portfolio management strategy. A commercial and practical attitude should be maintained when dealing with trade mark or brand name infringement via a third party’s domain name registration. Always be aware that third party registrants may be damaging your valuable reputation with the activities conducted on a site which holds your brand or mark’s name.
  5. Speak to your legal advisors about third party service providers which can monitor domain name activity across the internet, and produce reports detailing new domain names which are registered containing your brand or mark.

If you require any further information on the subject, or if you are currently dealing with such issues, then please do not hesitate to contact us.

 

This information is intended as a general discussion surrounding the topics covered and is for guidance purposes only. It does not constitute legal advice and should not be regarded as a substitute for taking legal advice. DWF is not responsible for any activity undertaken based on this information.