Tag:  “domain name”  | (3) posts

What opportunities and risks come with the new Top Level Domains (TLDs)?

When ICANN (Internet Corporation for Assigned Names and Numbers) launched the new TLD Program, the purpose was to stimulate innovation and competition in the domain- and Internet industry and to give the possibility to own and run a top level domain.

ICANN received over 1900 applications for 1400 new top level domains. A total of 575 of them was from trademark holders applying to register their trademark as a suffix. Out of these, 77 applications used city names or other geographical connections. Another 107 applied for new suffixes under different, non-Latin, languages. A total of 561 generic words have, or will, become new top level domains.

Up until today, 583 of these new top level domains have been activated and are now in a phase referred to as ‘General Availability’. A total of 27,593, 028 names have been registered.

In a world where digitisation is constantly accelerating, these new endings provide both opportunities and potential risks. By using a classic SWOT-analysis, we can point out the pros and cons.

A strength is to offer accessibility and a communicatively strong name.

Today you can’t find any available two to five letter combinations under .com and we are running out of six letter combinations as well. The prices for short, one-word .com domains in the aftermarket are increasing. It makes sense to consider travel.agency instead of travelagency.com when the price tag is $3’000 as opposed to $300’000.

The fastest growing Internet markets are not in the west. Some of the new domain extensions offer people the option to use their native language. According to www.nTLDstats.com 42% of all registrations of new domain extensions are made in China. Only 10% come from the U.S. Being able to communicate and trading online using non-Latin keyboard will become increasingly common as the Internet usage is increasing around the world.

The general awareness is still low, which is a weakness.

We are still in the early stages of new domain extensions and no one knows which role they will end up playing in the domain name eco system. They are late comers to a well-established market where the .com still is king and the first choice for any company looking globally. We don’t know if the new domain extensions will be able to compete on the same level with .com in the future. Next generation will not only know the answer, they will create it.

Shorter is better when it comes to domain names and the new domain extensions index as good as .com with Google.

A clear trend in the aftermarket is that with more opportunities and greater accessibility the market looks for shorter names under the new extensions and the value for long, i.e. three words .com domain names is decreasing. It is already proven that new TLDs are indexed just as well as the older top level domains such as .com and .net. Therefore, it is also natural that the shorter and more descriptive domain names are more attractive than long and complicated multi-word domains.

In the 90’s and early 00’s, some people still questioned whether it was economically viable to register keyword domain names under .com due to the uncertainty of usage.  Today we know better and with the knowledge of how Google index the new domain extensions, and the fact that Google themselves have applied for 101 top level domains, makes them a good complement to the current domain portfolio.

Trademark infringements and fraud/phishing attacks are considered threats.

Although trademark infringements in the domain name industry is not a new issue, domain names are to be considered and handled as very important intellectual properties due to the risk of infringements.

As with the .com, and other established domain extensions, we see typo registrations and/or direct infringements of trademarks used in attempted fraud and phishing attacks.

The problem is not under any specific extension. However, the people behind the attacks use the extensions in the same way in which they are intended to be used. This means that we see more economic related fraud and phishing attacks from finance related extensions and more security breach attempts from support/tech extensions.

ICANN has tried to be proactive around these issues by establishing Trademark Clearing House for trademark holders and complemented the UDRP (Uniform Domain Name Resolution Policy) with a ‘Fast Track’ called URS. It is still an issue which can, and should, be monetised.

In summary, the new domain extensions provide excellent opportunities to improve and develop the digital marketing and digital presence of businesses, but it also requires proactivity and action.

Marcus Glaad, Dotkeeper AB

Don’t let your trademark be guillotined!

Throughout history we have learned that revolutions can be very bloody. Or at least, the bloodiest and most horrible revolutions are the ones we remember from our history lessons back in school.

I remember a little play about the French revolution from my own school time. All the girls wanted to play Marie Antoinette. Not because her character had many lines, except the famous one to the starving people: ‘Let them have cake’! Nor because she wore a beautiful dress and a huge wig, but because she got to squeeze a little tube of fake blood when guillotined!

Now we are standing in front of a new revolution, yet a quite different one: a revolution of the Internet. Will this revolution also be bloody? Well, perhaps not, but we expect that 600-700 new generic top level domains will be released over the following three years and this will without doubt give rise to some conflicts between trademark owners.

Some of the new domains will appeal only to a specific business like .film, .architect, .airforce, .doctor, .university, etc.

For instance, I don’t think that the trademark owner of the famous cognac brand Renault will be interested in the domain name renault.car. But I´d be very surprised if the trademark owner of the famous car brand Renault will not have an interest in that domain.

But what about .luxury? Or .email? Or domains that may be attractive for marketing campaigns like .events or .vip?

It´s not hard to imagine that co-existing brands will share a common interest in some of the domains. And what will happen if both the car and the cognac trademark owners file for the same domain in the sunrise period? Remember that we will be dealing with hundreds of new and probably very different registries with different sets of rules. So it’s not quite clear yet, how these conflicts between trademark owners will be handled by each registry. A method that we have seen from previous sunrise periods is that the domain is put up for an auction between the applicants.

However, what is absolutely clear is that you must pre-protect your trademark in the sunrise database for trademark owners (the so-called Trademark Clearinghouse database) if you don’t want to see your trademark being guillotined! If your trademark is not protected here you will not be able to file any domains at all in the sunrise periods.

By the way, I didn´t get the role as Marie Antoinette but this shouldn’t stop me today from saying to all trademark people: ‘Let them have trademarks’

Dorthe Vangsgaard Sørensen, Paralegal

Are trademarks protected on the Internet?

That’s a question I am often asked by my clients. Every time new top domains are launched many clients feel compelled to register – and pay for! – yet more new web addresses in order to prevent a pirate from getting his hands on their trademark or brand name. But is there any real commercial advantage for the client in registering another new address?

Trademark attorneys like me are frequently made aware of our clients’ misgivings about trademarks on the Internet. Many swindlers cash in on this anxiety by claiming (as certain Asian companies do) that a third party has applied to register the company’s trademark or brand under a number of Asian top domains, and that it is imperative to take swift action to prevent these registrations.

There is no need to panic in cases like this. Instead, all you need to do is to make sure that your company has a reliable domain name supplier and a trademark attorney that you can contact. Together, these two people can help you to ensure that your company’s trademarks and brand names are fully and properly protected. They can also tell you quickly whether there is any genuine need to register the domain name in question.

Stockpiling trademark registrations and domain name registrations purely to defend your brand is not something that I or any of my colleagues would recommend. The costs involved for registration and administration are often totally out of proportion to what a company stands to gain by such defensive action. Moreover, trademark law includes a requirement that a brand or trademark must be used within a specified period of time; if it is not used, the registration can be revoked. The important thing is, first and foremost, to ensure that you have adequate and effective protection in those markets where your company is active or plans to be active within the foreseeable future. It is also important to keep a close watch on your trademarks, brands and domain names. In the same way as there are services you can subscribe to that notify you when a trademark is published in the trademark register, you can also subscribe to services that alert you if your trademark is registered as a domain name.

But how should you act if your trademark is registered as a domain name? The first step is usually to check whether any rights already exist or have been registered in the relevant geographical area which would mean that the use of the trademark in a domain name or on a website could constitute trademark infringement. There is also the option of investigating the feasibility of one of a number of alternative dispute resolution procedures, such as those established by the international domain name organisation, ICANN.

In June ICANN published a proposal that aims to simplify this process for the rightful owner of a trademark. The proposal includes plans for a central database containing global IP rights information, which can be used to prevent registrations “in bad faith” when further new top domains are launched. The ICANN proposal also paves the way for a speedier and less expensive dispute resolution procedure and a centralised WHOIS database that contains details of domain name rights holders, registration and renewal dates, etc. from a number of different TLD registries.

The proposed changes will be discussed at a meeting in Sydney at the end of this month. Those of us who work with these issues are pinning our hopes on a more cost-effective and less time-consuming system that guarantees the best protection for our clients’ rights.

Ann-Charlotte Järvinen, Attorney at law