The crown jewels
The crown
jewels
Concentrating on the “super six” registries will help organizations
to have a focused gTLD strategy and can help to protect your
brand, according to Kristin Geboers, Senior Product Marketing
Manager for Thomson CompuMark.
T
he face of the internet has changed, and it is
requiring trademark attorneys to go to great
lengths to protect their clients like never before.
The new gTLD (generic top-level domain) program has
altered the game for brand owners, community groups
and entrepreneurs alike, as descriptive terms outside the
ubiquitous .com and .org are now allowed to be registered
and operated as internet domains. Their presence is
forcing trademark lawyers to become ever more diligent
about their clients’ brand protection strategies.
First some background: After many years of debate,
the Internet Corporation for Assigned Names and
Numbers (ICANN) opened the new gTLD process in
early 2012. The gTLD program was specifically
developed to increase competition and choice in the
domain name space, and aimed to help create a globally
inclusive internet, regardless of language or region.
ICANN ultimately received 1,930 new gTLD
applications, which represented just over 1,400 unique
strings, as many had applied for the same terms. Of the
applications received, more than 650 were specific
brands that had applied for registries in their own name.
That’s impressive enough, but even more concerning for
brand owners were the more than 600 applications for
generic terms.
It would be easy for companies to get bogged down
trying to cover themselves across 600 plus registries, but
the practical reality is that it’s just not feasible – or
economical – to register every single name combination
that a brand could conceivably protect. To succeed in the
new gTLD universe, a brand’s defensive registration
Résumé
Kristin Geboers, Senior Manager of Product Marketing for the Trademarks
business at Thomson Reuters
Kristin joined Thomson Reuters in 2007 as a Marketing Manager at
Thomson CompuMark. As Senior Manager of Product Marketing she sets
the marketing strategy for the Trademarks business within Thomson
Reuters IP Solutions. Kristin holds a Masters degree in Communication
Sciences from the VUB in Brussels and an Executive MBA from UAMS in
Antwerp.
CTC Legal Media
strategy needs to form a clear connection with what the
registry is offering.
We’ve tried to make things easy by identifying and
demystifying the six “crown jewels” of domain registries.
We’re calling them our “super six” registries because they
cover a broad swath of the gTLD landscape and give
brands a great deal of flexibility for playing defense and
offense. They are:
• Generic (.APP, .BLOG, .NEWS)
• Gripe (.FAIL, .WTF, .REVIEWS)
• Vice (.SEX, .CASINO, .BET)
• Corporate identifiers (.INC, .LTD)
• Charitable (.CHARITY, .FOUNDATION, .CARES)
• Geographic (.LONDON, .NYC, .AFRICA)
By understanding these six categories, brand
professionals can develop a strategy to minimize the risk
of their brand’s digital exposure to cybersquatters,
scammers, hackers and other ill intentioned entities.
Elisa Cooper, director of product marketing for
MarkMonitor a business of Thomson Reuters, explained:
“This is all about minimizing your risk, as opposed to
registering broadly. We do not encourage registering
every trademark, every variation, every misspelling
across every new gTLD registry; it’s simply not going to
be possible. We’re really helping companies, at this point,
try to make smart registration decisions where there’s
either a great amount of risk, or there’s a very close nexus
between what the brands are all about and what the
registries are promoting.”
To help trademark professionals navigate these
exhaustive new registries, we’ve outlined a gTLD
management process, covering everything from the
review of the current landscape through to evaluation of
brand protection strategies.
Understanding and taking advantage
of the Trademark Clearinghouse
The first step to gTLD management is a review of the
current landscape. Should you be submitting Sunrise
Registrations in any of the gTLDs, which will give you
priority registration periods when you can register a
domain before it becomes generally available to the
public?
THE TRADEMARK LAWYER
1
The crown jewels
Reassess brand protection strategy
Monitoring is going to be essential in the coming months as new
domains start to roll-out into the marketplace. At the most basic
level, it is important to monitor all new gTLD registrations for
improper use of brand, trademarks or slogans. By monitoring
domain registrations for improper use of brands, trademarks and
slogans, who owns dangerous names and their history, and cataloging
illegal sites, companies can proactively anticipate potential domain
name abuse and take action before the new name takes root in the
marketplace.
In many cases, signals spotted in the domain registration
monitoring process could reveal more broad-based counterfeiting or
infringement activities in development. A solid brand protection
strategy will be synchronized with the broader IP and brand
protection initiatives so that early warning indicators in one area will
trigger closer scrutiny in another.
A change from defensive registrations
to policing
Trying to register every variation, typosquat (URL hijacking) or
misspelling in this new environment as a method for protecting
brands promises to be cost prohibitive. Instead, policing for abuse
Thankfully, ICANN has put in place a number of mechanisms,
which, if used correctly, will help brand owners protect themselves.
Chief among these is the Trademark Clearinghouse. Operating as a
central repository of authenticated trademark information, the
Trademark Clearinghouse is the hub of the gTLD registration
process, through which brand owners can participate in Sunrise
Registration periods, qualify for defensive “blocking” and receive
notification when exact-match domain registrations are made.
“While participation in the Clearinghouse is an important step, it
is not the only step required for brand owners,” added Cooper.
“Simply submitting names into the Clearinghouse does not block
others from registering trademarks. It primarily offers brand owners
the ability to participate in Sunrise registration periods. While it
does notify brand owners – via the Claims Service – it provides a
notification ONLY when an exact-match domain name registration
has been made. As a result, implementing a brand protection solution
will be key for detecting abuse in this new environment.”
“
Due to the very real threats
of cybersquatters who prey upon
well-recognized brands, the addition
of hundreds of new top-level
domains will require brands to
reexamine the defensive portions of
their domain portfolios.
2
THE TRADEMARK LAWYER
”
Streamline your portfolio with a review
and taking action where it makes sense will be the key to brand
protection. By monitoring domain registrations for potential problems
such as the improper use of brands, trademarks and slogans,
trademark attorneys can help companies identify abuse and take
immediate action where it makes sense.
“
It would be easy for
companies to get bogged down
trying to cover themselves across
600 plus registries, but the
practical reality is that it’s just
not feasible – or economical –
to register every single name
combination that a brand could
conceivably protect.
”
Due to the very real threats of cybersquatters who prey upon wellrecognized brands, the addition of hundreds of new top-level
domains will require brands to reexamine the defensive portions of
their domain portfolios. Today, the bulk of corporate domain
portfolios largely consist of defensive registration, averaging up to
80%. But with over 600 new registries launching, it will not be
economically feasible to register every single domain construct that
could present an infringement challenge.
“This is a critical point,” Cooper emphasized. “Because many
domain name portfolios have become bloated over the last several
years, now is the time to pare back in order to make way for new
gTLD registrations. Companies will need to make important decisions
that will form the basis of their registration policy and ultimately
determine which brands to register as domains because they cannot
possibly register every conceivable variation. By following a wellthought-out plan, brand owners will be less likely to make reactive,
expensive decisions every time a new registry launches.”
A central point of approval
We expect upwards of 30 to 40 new top-level domains to launch each
month and when things are moving this quickly, there will be a
temptation to file in every direction as fast as possible. First, it will be
important to identify the individuals who are permitted to request,
approve and modify registrations. With a new generation of phishers
using brand name gTLDs to appear legitimate, and a breed of
cybersquatters that range from rabid fans of a brand to those who
think it’s cool to have a close tie to a brand in the form of a gTLD, a
central point of contact can limit your volatility to modifications. A
single person should have final review and approval of any changes
and the domain should always be locked to ensure that unauthorized
changes cannot be made.
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THE TRADEMARK LAWYER
3
The crown jewels
As a starting point, it makes sense to develop a clear set of policies
that identifies when new domains should be registered. These
conditions may include product launches and campaigns, the
opening of new top-level domains or the liberalization of an existing
country code top-level domain. Your policy should also provide
guidelines on important variations, common misspellings or even
combinations of terms.