Are you up to date with how to protect your registered trademark?

If you own a registered trademark that you want to protect online from being involved in phishing attacks or from being used by cyber squatters, read on…

As discussed in a recent article on the BBC website, over the past two years ICANN (Internet Corporation for Assigned Names and Numbers), the body responsible for naming policy on the internet, has been laying the foundations for what can only be described as a revolution within the domain space. Over the next two years over 1,000 new generic top level domains (gTLDs) will be launched and this will provide huge online branding opportunities for business and organisations, but will also have a huge impact on brand owners and their ability to protect their brand online.

…it will be an opportunity for those companies who weren’t lucky enough to be around when the original land grab happened in the .com world back in the mid-eighties to make a (domain) name for themselves, quite literally."

On Tuesday 26th March 2013, ICANN opened the doors of the newly formed Trademark Clearing House (TMCH). This body will act as a single database of authenticated registered trademarks to help protect brands and their intellectual property rights within the domain name space. The TMCH will be focused on protecting a company’s trademark at the second level – a second level domain is anything left of the dot, so for us the mercurytide bit in is what would be protected. The global audit firm Deloitte have been appointed to provide the verification services for the TMCH.

What is a gTLD?

A top level domain (TLD) is the suffix that appears at the end of a domain name i.e.  .com, .net, .org.  A gTLD is a category of TLDs and includes .com, .net but also includes .gov, .info, .xxx .... There were previously only 22 gTLDs but, over the next 2 years there are likely to be around 1,200.

What value will the new gTLDs add?

In layman’s terms what the release of these new gTLDs means is that company / business / organisation / community / group will have the opportunity to differentiate themselves online and become more recognisable to consumers. They will be able to demonstrate specific features like location, areas of expertise, brand confidence etc by their domain suffix. Using Mercurytide as an example we could register mercurytide.edinburgh as this provides insight into our geographical location, and perhaps mercurytide.web as this signifies that we provide web-related/online services (amongst other things!).

What should you do?

To protect your brand online, you need register your trademark with the TMCH. Once verified you will be notified when new gTLDs are released that match your trademark, and you’ll get a sneak preview of what will be available. You'll have a grace period of 30 days, called a ‘sunrise period,’ where you’ll have the exclusive opportunity to pre-register domain names that match your brand and that incorporate the new gTLDs before anyone else. Firms wanting to register their trademarks to the TMCH will have to pay a fee of between $95 (£62) and $150 (£98) per year, per trademark record. More information on how to register your trademark with the TMCH can be found in these TMCH guidelines. NB: If you don’t have any intention of using the TMCH to protect your digital assets, there is no point in registering your trademark with them.

Good news and not so good news….

The good news – as Stuart Fullerton from NetNames says "…it will be an opportunity for those companies who weren’t lucky enough to be around when the original land grab happened in the .com world back in the mid-eighties to make a (domain) name for themselves, quite literally."

The not so good news… although on the surface it all seems upbeat, there has been growing opposition to the release of these gTLDs. An unexpected opponent is Esther Dyson, the founding chairperson of ICANN, who wrote that the expansion "will create jobs [for lawyers, marketers and others] but little extra value." The opposed camps generally feel that this movement by ICANN is unnecessary and it will ultimately result in excessive costs and potential harm to brand owners, as well as being confusing for consumers.

Worryingly, they see the new gTLDs as opening up the opportunity for consumers to fall prey to phishing scams. The reason for this is that it’ll be virtually impossible for any brand owner to register every single gTLD that relates to their brand - it will not be cost effective and there is no point in trying to register any illogical combinations that have no association with an organisation's activities. This leaves the door open for unscrupulous individuals to try to register multiple web addresses that exploit a trademark at the second level – ultimately this could allow them to participate in fraudulent activity or damage brands.

A great example of this is the expected release of the gTLD .sucks..... Imagine what could happen if a disgruntled consumer wanted to damage your brand online? They could register, for example, and create damaging content online that could negatively impact your reputation, and there wouldn’t be much you could do about it…..

The last point to be very aware of is that the TMCH does not have the ability to fully prevent trademark breaches. The body will only cover direct trademark matches - partial matches are not covered.

So ultimately, what's clear it that this entire movement will undoubtedly have a huge impact on the digital landscape, but importantly will impact heavily on brand holders and how they go about protecting their brand and digital assets. And, what's for sure is that these new gTLDs are coming, and should not be ignored. This is a very good opportunity for companies to take a good look at their domain registration strategies and look at registering terms that are meaningful to their business. And, although brand owners are unlikely to register every gTLD relevant to them, it doesn’t mean they want anyone else to grab the ones they do not register, so careful consideration is required!

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