Will hundreds of new domains complicate your online trademarks?

Nov 21, 2014 • Business, Events, Marketing
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Everyone knows what it means to have a “dot-com”, and most people have heard of a “dot-net” and a “dot-org.” But the Internet is growing far beyond these original generic top-level domains (also known as gTLDs.) Over the past few years the Internet Corporation for Assigned Names and Numbers (ICANN) has created a flood of new gTLDs covering a wide variety of concepts, locations and products. Intriguing domains like “dot-gift”, “dot-cancerresearch”, “dot-lawyer”, “dot-hiphop”, “dot-nyc” – even “dot-beer” – are all available for new registration.

While the new gTLDs are intended to create new online neighborhoods and virtual communities, all this new digital real estate means companies and brands have more to protect. For example, Harley Davidson now has to snap up “harleydavidson.motorcycles” in addition to harleydavidson.com. Beats Audio now needs to register “beats.audio”, “beatsaudio.hiphop” and possibly other music-related domains. As the Internet grows to include hundreds of new gTLDs, the odds that more companies will contend for the same registrations will grow too.

At OICANN 51 at Century City, Los Angeles, Californiactober’s ICANN 51 conference in Los Angeles, ICANN’s Trademark Clearinghouse was tasked with explaining the new Internet landscape to attendees. The Clearinghouse, or TMCH (at clearinghouse.org) monitors the Internet for new domain registrations for every gTLD. When a new gTLD opens, the Clearinghouse notifies the trademark holder to give them a chance to register domains before the general public can. This window of time (i.e. starting when a new gTLD is created and ending when the general public can register a domain in it) is called the “sunrise period.”

Whether trademark holders submit their own trademarks to the Clearinghouse, or get help from a verified agent, the same process applies:

  1. The TMCH verifies both that a trademark is valid and that the company is actively using it.
  2. The TMCH gives the company an SMD file, which establishes the company as the trademark owner.
  3. The company applies for as many domains as they want, using the SMD file for authentication.

From that point forward, if someone tries to register a domain in any new gTLDs that matches a trademark, the TMCH notifies the trademark holder automatically. Registering a mark with the TMCH costs $150 USD, which is conceivably worth it to protect an important piece of intellectual property.

Notably, the Trademark Clearinghouse does not grant trademarks; it simply verifies that a trademark has been granted by the submitter’s native country. The trademark verification itself is performed by Deloitte and the data is managed by IBM, who are partnered with the TMCH to provide mark vetting services.

“Many of our clients need help understanding the mechanics of trademarks on the Internet,” said Dr. George Edwards, a software and Internet IP consultant with Quandary Peak Research. “Digital trademark issues are turning into a larger portion of our work than we originally guessed. Demand for that knowledge is growing, as far as we can see.”

Although it’s intended to help with online brand management, the entire reason for the Clearinghouse’s existence is potentially problematic. “[The Clearinghouse] could be seen as the solution to an invented problem,” said Edwards. “While some companies are definitely excited about the possibilities of these new domains, some feel they create needless and expensive vulnerabilities for their brands. And with almost two thousand new domains, there’s little doubt that many of them will simply be money pits for companies, regardless of the few that may catch on.”

Edwards’ advice? Make sure your existing online presence is solid before exploring new domains. “First, companies considering these new domains should get advice from their trademark attorneys about their specific legal issues. Second, make sure you are publicly utilizing your official mark. Third, review your current website for SEO best-practices to solidify your online brand with the major search engines as well as customers. If you do decide to register a domain under one of the new gTLDs, you’ll have the benefit of knowing what already works for your business, and you’ll have plenty of evidence if someone does improperly register a domain that should be yours.”

Once your existing online presence is squared away, Edwards says a wait-and-see approach makes sense. “Big companies are accustomed to defending their brands online, but small businesses don’t have the money to throw at this. If you have a specific reason to register a site in one of the new domains, that’s fine; but I wouldn’t start buying domains speculatively. Keep an eye on what other companies in your space are doing about these new domains first, then see if a similar course of action makes sense for your business.”

Note: This article’s author is employed by Quandary Peak Research.

Jason Frankovitz

Jason Frankovitz has been in the trenches of technology entrepreneurship for over 20 years. He now consults about a variety of software-related legal issues: patents, theft of trade secrets, and source code analysis. Contact him at jason@quandarypeak.com.

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