19 September 2016TrademarksAndreas Soll

New gTLDs: protecting your brand online

With the introduction of new generic top-level domains (gTLDs) we have already seen exciting new addresses being launched and it is likely that we will see many more great and exciting concepts. However, the new gTLD programme has irrevocably changed the understanding of brand protection on the internet. Over the medium term, brand owners need to protect their trademarks now under more than 1,000 gTLDs.

What’s new for brand owners?

They still have to deal with previous abuse scenarios for domain registration, such as the registration of protected terms as domain names by third parties, one-to-one brand registrations and so-called typosquatted domains, but now also in the growing number of available gTLDs. It’s feared that the consequences of domain abuses such as reputation damage, unfair competition (eg, withholding or traffic redirection), cybersquatting, phishing and plagiarism will also rise accordingly.

Concerns relating to the impact of the enlarged name space include that current strategies for trademark protection are only conditionally transferable to the new situation. For example, the popular strategy of registering potential typo domains related to trademarks becomes more complicated considering the number of potential new extensions that will be emerging over the next few years. Defensive registrations for 1,000 gTLDs are also hardly financially feasible.

How can brand owners protect their brands under new gTLDs?

A variety of new mechanisms may help to handle the increased expense of monitoring brands on the internet and the defence of domain abuses. These include the selection of critical terms and gTLDs, selective defensive registrations under important extensions, registration in the Trademark Clearinghouse (TMCH) and use of blocking methods, anonymous purchase of domains, takedowns, and use of the Uniform Domain-Name Dispute-Resolution Policy/Uniform Rapid Suspension System.

The selection of a suitable service provider for advice and registration shouldn’t be underestimated in this context. And finally, the development of an own-brand protection and monitoring strategy will be essential.

Covering the bases

Monitoring services are the starting point for effective action against the abuse of brand names on the internet. BrandShelter, the corporate domain service of Key-Systems, supports brand owners in accomplishing the protection of brands and trademarks on the internet and the secure management of their domain portfolios in general. It offers comprehensive monitoring solutions in different areas.

BrandShelter’s domain monitoring service, for example, analyses domain sale platforms, free domain names and registrations in nearly all gTLDs, including typos and phonetic similarities. This type of monitoring protects against potential cyber attacks by the preventive identification of similar domains. Trademark monitoring means that brand owners receive alerts for already registered and recently published worldwide brands that exactly match their trademark entry or are confusingly similar. International company names, trademark applications, designs, etc, are checked.

"BrandShelter provides consulting for domain registration and administration under the new gTLDs, and the evaluation of the registration guidelines and options for legal rights protection."

Web content is also an area covered by monitoring services. As soon as a brand or name is mentioned on websites, blogs or in meta tags, the brand owner will be immediately notified. It is possible to track content changes and stay up to date on the opinions about the company or brand that are posted online.

Social media monitoring is becoming increasingly important. It includes the observation of existing and new social networks and the identification of trademark infringement in user names and profiles. Securing brands and names of company representatives as user names on social media is also part of this service.

Through the (reverse) Whois service, brand owners get information about current or former owners of certain domains or let BrandShelter look for domains that can be assigned to a specific owner by using address data. Domain Whois changes are notified. BrandShelter observes the accessibility of customers’ internet services 24/7 through the monitoring of web and mail services, domain name system, file transfer protocol, traffic, etc, and informs clients immediately in case of disruptions.

The new gTLDs are the future of the internet and BrandShelter supports trademark owners to manage their performance when using them. BrandShelter provides consulting for domain registration and administration under the new gTLDs, and the evaluation of the registration guidelines and options for legal rights protection. Further, trademark registration in the TMCH to participate in sunrise periods and claims phases, processing of sunrise applications and mass blocking of brand names under the gTLDs of various registries are offered.

Brand protection with your own gTLD

In 2014, the Internet Corporation for Assigned Names and Numbers (ICANN) asked the community to make a recommendation for the board on how to implement the second round of new gTLD applications. This recommendation will be presented to the board in mid-2017, so the next round of the new gTLD programme may be expected in 2018/19. This will be the chance for brand owners to create their brand or name as a standalone .brand gTLD.

BrandShelter will assist companies, trademark owners, governmental organisations, cities, regions and communities with the protection strategies of their brands, conception and realisation of their own gTLD including strategic consultation and project managing.

BrandShelter’s services include continuously providing information on ICANN’s new application windows, benchmarking analysis of existing .brand gTLDs, conception and support of a client’s ICANN new gTLD application, technical registry operation tailored to customers’ needs and the connection of the registration process to work flows in their company. It is time to be part of the new internet: think of a .brand gTLD.

Andreas Soll is product manager of  BrandShelter, a business area of Key-Systems, an international domain registrar that administers more than four million domains for more than 100,000 retail and corporate customers and 2,300 re-sellers worldwide. He can be contacted at:

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