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In the second of a two-part series, WIPR speaks to three agents of the Trademark Clearinghouse to hear their perspectives on brand protection.
“Constantly keeping an eye on the domain market is quite a laborious task,” says Jeanette Heller, senior manager registry operations at InterNetX, a domain name company based in Germany.
She is speaking in light of the new generic top-level domain (new gTLD) programme, which has changed the landscape for brand protection.
This approach may be laborious, but it is inevitable if brands want to carry out online trademark protection properly, she adds.
With around 900 new gTLDs currently on the market, registration of domains as a preventive measure has become more necessary than ever, but although the new gTLD programme has required a new approach to online brand protection, there are positives too.
Heller says the increased number of domain extensions available to companies has made it easier for them to find domains matching their brand.
“If a company or a brand uses domains with different domain extensions, the hit rate in search engines usually increases substantially,” she adds.
In addition, use of particular TLDs such as .tech, .game or .bank to specify the area in which a company operates offers additional marketing possibilities.
Specifically, the increased number of domain variants on the market allows companies to use particular domains for an entire marketing campaign. This offers the advantage of better promoting the campaign, as internet users are more likely to type the particular domain name into the browser bar.
“The companies can benefit from a direct way of addressing potential clients—independently from search engines,” she concludes.
“On one hand, the new gTLD programme has become an important means to protect trademarks online,” says Heller.
“But on the other hand, the enormous number of new domain extensions makes it quite complicated for brand owners to get through all required actions,” she explains.
Elaborating on the new brand protection challenges, she says that one of the biggest difficulties is the constraint of resources. This makes it difficult for companies to implement brand protection strategies and keep pace with the rapidly changing demands on the market.
"The owner benefits from many other services such as the trademark claims service and the Trademark Registry Exchange."
“At InterNetX, we support our customers particularly in this regard. We take care of all aspects concerning online trademark protection: we do searches, prepare all task and files, document processes, provide expert advice as well as useful tools, including necessary updates to keep up with this complex subject,” she explains.
As a trademark agent of the Trademark Clearinghouse (TMCH), InterNetX makes use of the tool on behalf of clients. She says that the TMCH “fits perfectly into our B2B approach and adds a beneficial value to our business partners”.
The biggest advantage is having a centralised database for the management of trademarks, says Heller. Previously, a trademark owner had to enter its entire trademark details for each individual TLD registry, whereas now, the trademark owner needs to provide the relevant data only once using the help of a TMCH agent and is then prepared for all future TLD launches.
“Additionally, the owner benefits from many other services such as the trademark claims service and the Trademark Registry Exchange (TREx),” she adds.
With the claims service, brands receive notifications about anyone intending to register (and then registering) domains matching their marks. The TREx, launched in 2018, provides trademark owners with an extra tool to fight online infringement.
Heller adds that InterNetX’s TMCH agent service is available in various languages and a “dedicated team with extensive experience in the domain industry” is on hand to provide support.
Brand protection does not end with the TMCH, she notes. “We try to support our partners with a holistic approach by offering additional services and products such as SSL certificates, domain consulting, efficient tools and much more,” she explains.
Currently, more than 80% of worldwide data traffic is encrypted, Heller claims, and “our goal is to establish SSL encryption as the norm for all data traffic on the internet”.
In practice, the implementation of SSL certificates is rarely automated, so switching a website to full https encryption can create problems throughout implementation, she explains. With the company’s ‘Proceed’ service, any website can be encrypted with just a few clicks.
Discussing the further rights protection mechanisms, or improvements to the additional ones, which she would like to see rolled out in the future, Heller says the simplification of processes as well as lowered costs “would certainly be a good approach for all parties involved”.
She adds that “although many customers have not registered a trademark with a trademark office, they nonetheless use their brands and brand names. An extension of the trademark protection at the TMCH would be a positive signal for them”.
Ultimately, however, it is most important for companies to protect not only the explicit wording of their brands, but also the variants of it, she continues.
All these issues make it challenging for trademark owners to consider all aspects of online brand protection and, undoubtedly, says Heller, the demands in this field will considerably increase in the future.
“Cooperation with experts will become more and more important so that brand owners can continue to concentrate fully on their day-to-day business,” she argues.
Looking back on what has been learned so far, Heller says “it turns out that merely technical requirements such as brand-matching domains, the optimal performance of servers and a reliable data protection with SSL encryption has an impact on how a brand is perceived by internet users”.
Therefore, she says, a well-prepared online presence is important for the reputation of a brand and, in order to achieve this, efficient teamwork between marketing, sales and the IT department has become more important than ever.
Matt Serlin, senior vice president of client services and operations at US-based corporate domain name management company Brandsight, says the new gTLD programme has introduced a fundamental shift to the domain name ecosystem and has impacted all brand owners.
“In addition to creating new opportunities for brands to use new gTLD extensions for marketing purposes, it has also allowed a number of brands to create their own dedicated space online with their .brand TLDs, with all the benefits that presents,” Serlin says.
"The TMCH has become a 'must-have' for brand owners as part of their overall domain and brand strategies."
It has also, however, greatly expanded the potential for infringement against brand owners and they have had to monitor a greater number of gTLDs than ever before, he adds.
“A decade ago, the approach was to pursue every infringing domain that was registered, but brand holders now have to be much more selective in the names they attempt to suspend or recover,” says Serlin of the new brand protection challenges.
In this regard, the TMCH has become a “must-have” for brand owners as part of their overall domain and brand strategies, according to Serlin, who lauds the TMCH’s centralised trademark validation service that allows participation in gTLD sunrise launches.
“Frankly, attempting to launch hundreds of gTLDs in any other manner would have been chaotic and completely unmanageable,” he argues.
In addition, he says, the TMCH’s ongoing notification service of exact-match domain registrations has been “extremely valuable”.
Asked what further rights protection mechanisms, or improvements to the additional ones, he would like to see rolled out in the future, Serlin says the rights protection mechanisms (RPMs) put in place for the last round of new gTLDs were meaningful and successful.
“My hope is that those carry over to the next round as well,” he adds. “Something like the blocking put in place by some registry operators could also be looked at as a model to be applied to all new gTLD registries to allow brand holders the opportunity to block their brands and strings across registries in the future.”
Looking to the next five years, Serlin says that as brand protection online is constantly evolving, with the threats to brands and consumers changing rapidly, attempting to stay ahead of those changes is key.
“Things such as access to Whois information as a result of the EU General Data Protection Regulation (GDPR) is one important aspect of those efforts,” he says, while access to domain registration data “as we’ve known it for two decades is forever changed”.
“It will be vitally important that whatever new system is created will be useful to those brand protection efforts, while still honouring the fundamental privacy principles GDPR addresses,” he concludes.
“The new gTLD programme has not yet reached its full potential, with registration numbers well below predictions,” says Daniel Greenberg, director at Lexsynergy, a domain name management and online brand protection company with offices in the UK, US, Australia and Africa.
“Africa has a population of 1.22 billion people yet the number of .africa registrations is fewer than 17,000. There is clearly a disconnect,” he adds.
While Greenberg admits that the programme has created new avenues to “brighten up the domain name landscape with more choice”, there is more to be done.
"The TMCH’s biggest benefit has been allowing clients to participate in multiple sunrise period launches."
On the issue of brand protection, the new gTLD programme has led Lexsynergy’s clients to assess their domain portfolios with a view to developing a strategy to tackle the new gTLDs.
“Initially there was a sense of uncertainty and concern but now the approach is to monitor and assess the risk of new registrations. A calculated approach avoids chasing after any potential infringement at first sight,” he explains.
Lexsynergy has addressed the new brand protection challenges facing clients by analysing their domain portfolios to determine high-risk TLDs, as well as assessing the option of the blocking service offered by some registry operators. In cases of infringement in high risk domains, appropriate legal action is taken.
As do other domain name companies, Lexsynergy embraces the TMCH as part of a wider brand protection approach.
The TMCH’s biggest benefit has been allowing clients to participate in multiple sunrise period launches to ensure they secure key domain names before they are released to the public, he explains. The claims notifications informing clients of identical registrations is also useful, he adds.
To improve the TMCH, Lexsynergy would like to see the claims notification service cover typosquatted domains as well as domains including a trademark but not identical to it, and for it to apply indefinitely to all new gTLDs and, potentially, country-code TLDs.
“It is best described as an early warning brand detection service,” he says.
“In the next five years, trademark owners will not rush out and register in fear, but rather take a calculated approach assessing risk and implementing a sound enforcement process to address the risk,” Greenberg concludes.
InterNetX, Brandsight, Lexsynergy, TMCH, brand protection, gTLD, domain variants, trademark management, SSL certificates, RPM, GDPR, trademark infringement