12.05.2017

nTLDs present new challenges for trademark right protection

How to protect your brand from product piracy.


As almost always in life there is a reverse to the medal, and the new top level domains that have gradually been introduced since October 23, 2013 are no exception. The reason for the expansion of the TLD portfolio is the ever-decreasing availability of precise, memorable country-specific and generic domains. In the years 2000 and 2004 ICANN reacted by expanding the gTLD portfolio with domain extensions such as .JOBS, .MOBIL and .INFO. Due to the high demand, ICANN decided in 2008 to release more nTLDs. Today 1,216 new domain extensions are available, and 27.71 million domains have already been registered so far. For companies this means that they have to adapt their online strategies to a transformed market environment.

The opportunities of new domain extension

The new domain extension present opportunities and challenges alike. It’s undeniable that the new TLDs make navigating to the desired domain easier. If a company owns domains under several TLDs, it increases their presence in search results. Particularly memorable domain names or such that a part of a whole marketing campaign are often typed in directly by users in their web browsers, reducing the dependence on Google and other search engines. Specializing the company or the website content by using a corresponding TLD further enhances user experience by targeting clients directly – for example by using industry-specific TLDs such as .TECH, .GAME or .BANK or by categorizing website content through domain extensions such as .SHOP, .BLOG or .NEWS.

Risks of new domain extensions

Regrettably nTLDs also come with a few unpleasant surprises such as cyber or dot squatting: cyber squatting means registering domains of copyrighted brands or names and reselling them to the respective companies and copyright owners at inflated prices. If the company does not accept the offer, the cyber squatters often react by publishing content harming the companies’ image, forcing them in the end to accept the dubious offer. Dot squatting is the practice of registering a brand name without the dot between the subdomain (www) and the actual domain name, the second-level domain. It follows a very similar approach to cyber squatting. The copyright infringement of cyber and dot squatting is problematic, particularly if a brand of the same name exists in another country in a different product category.

How to protect your brand

This leads to companies and trademark holders constantly being confronted with the difficult task of continuously having to monitor the domain market. Preventive measures to protect the own company or brand have indeed become more necessary than ever. But it is the wrong way to aimlessly register domains that might be associated with your own company or brand. Protective measures have to be systematic and well directed. And there are online services that can help with that:

Trademark Clearinghouse

Trademark Clearinghouse

ICANN offers a solution for trademark holders in the form of Trademark Clearinghouse (TMCH). Companies can use the TMCH to enter their brands and then benefit from the Sunrise Phase during the introduction of a new gTLD. During this phase that lasts at least 30 days, registered trademark owners can register their domain ahead of all other interested parties. This results in a very high probability to register the desired domain.

Trademark Claims Service

The Trademark Claims Service is another helpful service offered by ICANN. It informs those interested in a specific domain about possible trademark infringements during the registration process. The Trademark Claims Services plays a particularly active role during the Early Access Phase. During this 90 day period the danger of a trademark infringement is particularly high. After sending an automated warning to the interested client, he can abort the registration. If the client still wishes to proceed with the registration despite the warning, the trademark holder will be informed about the registration and can then decide whether or not to take legal action.

Trademark Clearinghouse Agent

The most comfortable way to protect your brand is through the TMCH agent. It offers several services that make protecting a brand a lot easier, but also helps with the strategic planning. The user will be informed if a proof-of-use is necessary while entering data in the TMCH agent web interface; pre-registrations are also possible and copyright entries will be automatically extended at the end of their term.

Whether or not you want to take copyright protection into your own hands, or choose to use the help of an external provider is up to you. The important part is not to leave the protection of your brand up to chance in times of various dangers through brand piracy.


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