Jan Corstens
Jul 22, 2013

Navigating the internet’s domain big bang

Insight on protecting brands with trademarks prior to the rollout of new top-level internet domains.

Jan Corstens
Jan Corstens

With the launch of hundreds of new top-level domains (TLDs), there is a great opportunity for brands to take advantage of the expanded domain-name universe.

The expansion is significant and includes branded, generic, and geographic domain spaces such as .microsoft, .beauty and .nyc, all appearing directly alongside established domain names like .com, .org, and .info.

However, this opportunity also contains threats, and recent research shows that one in five of the top 200 brands still has little or no awareness of the new domains. Brand owners need to become rapidly familiar with the actual process of securing and defending their intellectual property. 

The Internet Corporation for Assigned Names and Numbers (ICANN), an international organisation charged with managing the domain-name system, has both led the expansion of the system and simultaneously introduced significant brand-protection measures into the programme. At the heart of these protections is the innovative international database of brands with registered trademarks, the Trademark Clearinghouse, which officially launched on March 26, 2013.

Following ICANN’s 46th International Public Meeting in Beijing in April this year, market momentum has been building, and brands have shown a keen interest in the Trademark Clearinghouse and the prevention services which follow from an entry into it.

The first service is a unique opportunity to gain first refusal on a trademarked term during the launch phase of any new domain name, the Sunrise Period. The second service is a warning system, the Trademark Claims service, which comes into operation for 90 days after the Sunrise Period. The claims system ensures that any applicant for an available new domain name will receive a warning of the trademarked term, if it is recorded in the Clearinghouse, before registration is possible. If the applicant still goes on to register in spite of the warning, the owner of the mark (brand) in the Clearinghouse will then also receive a warning and be able to take action if they see fit.

Speaking of action, ICANN has also boosted the options for brand owners to deal with “curing” infringing registrations by so-called cyber squatters. While the existing system, or cure, for pursuing infringed rights in domain names will be retained, it will be supplemented with a faster, cheaper option.

The existing system, the Uniform Domain-Name Dispute-Resolution Policy (UDRP), allows brands to pursue their rights and recover infringing domain names. The UDRP is widely regarded as an ICANN success, but it is also seen by many as somewhat slow and expensive. So, to combat this criticism, ICANN has introduced a rapid suspension process, which will also utilise the Clearinghouse. The Uniform Rapid Suspension (URS) process, will offer brands a means of resolving more precise cases of unambiguous trademark abuse in a manner that is both quick and low-cost. Under the URS, a temporary suspension of a domain name is applied for the duration of the registration period—which may also be extended by the prevailing complainant for one year.

As the rollout of new Internet domains continues, it is crucial for brand owners to familiarise themselves with the protections available and to proactively decide on which to take advantage of in order to have full control over their brand or brands.

Since the Trademark Clearinghouse is the cornerstone of ICANN’s brand-protection efforts, it is vital to decide which brands to place in the Clearinghouse and by what route. It is possible to enter brands directly into the Clearinghouse, but we expect that many brand owners will elect to use specialist service providers who have registered as agents of the Clearinghouse.

This is an issue of brand owners having control over their brands in a whole new universe of domain names. Marketers need to think about and deploy a strategy to manage and protect their brands through entry in the Clearinghouse and, where appropriate, by registering brand names during the Sunrise Period of the new TLDs.

Jan Corstens is a partner at Deloitte and operator of the Trademark Clearinghouse.

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