Steering clear of online brand protection issues in the world of new gTLDs

With online influencers from around the world in Durban for ICANN 47, Jan Corstens, Project Owner for the Trademark Clearinghouse and partner at Deloitte, discusses one of the conference’s major talking points: online brand protection in the era of new web extensions.

The global Internet community has moved to South African as the latest ICANN conference takes place in Durban this week. ICANN meetings have a heritage of hosting historic changes to the running of the Internet, but none perhaps so important as those being discussed this time around. ICANN, the organisation that oversees domain names on the Internet, is growing the number of web extensions (more officially known as generic Top Level Domains or gTLDS) from the small, recognisable pool that exists today, such as .com and .za, to a new world of branded domains such as .nike and .google, geographic extensions like .durban and .africa and even foreign script extensions.

Set to go live this year, the wave of new extensions will be something that everyone, from professionals to consumers, will notice globally on their web browser. It’s an exciting change, but the concept has understandably been met with concern by trademark holders around the world, worried by its brand protection implications. In recent years, trademark holders have learnt how to effectively prevent unauthorised parties from illegally registering a domain name that features one of their trademarks. However trademark protection strategies have to date only had to contend with a small handful of gTLDs – quite a different kettle of fish to the 1,000+ new web extensions they will have to protect themselves against once the new gTLD programme has been successfully rolled out.

To allay these concerns, ICANN has created The Trademark Clearinghouse as the only authorised and universal means of a brand owner protecting their trademarks across every new web extension. Brands that enter marks into the Clearinghouse benefit from two unique services. First, the Clearinghouse offers brands the opportunity to proactively register domain names which match their trademarks ahead of wider public availability, during the pre-launch ‘Sunrise’ period of every new TLD. Second, it warns trademark holders when anyone else registers domain names that include their marks, for the first 90 days following the launch of each new web extension.

Casting one’s mind back to online brand protection media stories in the 2000s, the importance of such a solution can be put into perspective. Many will remember media headlines identifying brands that had fallen victim to ‘cybersquatting’, which described the situation where domain names containing trademarked terms were fraudulently registered by parties looking to profit from or malign a major brand. These stories have subsided in recent times as brands have learnt how to proactively manage trademarks across today’s small volume of live web extensions. However, trademark holders that don’t put marks into the Clearinghouse ahead of the new gTLD roll out will have a challenge to keep up with which of the many extensions go live when. In this respect, brands that fail to submit marks into the Trademark Clearinghouse could cause the dark history of cybersquatting to repeat itself unnecessarily and result in easily avoidable online brand protection issues.   

As the launch of the first new gTLD edges closer, our data shows that the Trademark Clearinghouse has received over 5,000 registrations from mark owners wishing to protect themselves ahead of the domain name expansion. It’s positive to see good early take up with holders proactively recording their trademarks in the TMCH, but for mark holders who are yet to do so it is critical to take these steps now.

Trademark holders should not wait until the new gTLDs go live to submit marks to the Clearinghouse. Opting to wait may leave trademarks unprotected, as it can take up to 30 days for submissions to be processed. This could mean they leave themselves open to a window of vulnerability if marks are not registered in advance. The Early Bird system operated by the Clearinghouse means there is no penalty for recording marks early, so entering marks immediately will mean rights owners are safe in the knowledge they will benefit from protections as soon as the first domain is launched.

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