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July 18
New gTLDs Are Real. There Are New Realities for Protecting Trademarks

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According to recent statistics from ntldstats.com, there are now almost 30 million domain names having new top-level domains (TLDs).  A company or individual wishing to create an online presence now has hundreds of more relevant TLDs from which to choose, including .news, .club, .social, .store, .blog, .software, and more still to come. As a trademark professional, if your client’s trademark is known worldwide, you have your work cut out for you trying to protect that trademark or brand from use by cybersquatters and other nefarious individuals. From phishing for consumers’ personal information to distributing pornography or selling counterfeit goods, criminals’ potential to cause harm is exponential. Last year, the World Intellectual Property Organization (WIPO) reported that the number of cybersquatting cases was rising, in part, because of the introduction of new TLDs.

 
Fortunately, all trademark owners have some ability to protect their brands in the “sunrise period” of every new TLD; however, those protections cover only their specific marks and may not prevent the misappropriation of their brands in the long run. Defensively registering your client’s trademark in every new TLD is not particularly cost effective, but there can be some benefits to that approach. Other brands are choosing a different path by registering a domain in a more targeted way. For example, Seattle-based Amazon has registered and is currently using several branded domains in new TLDs such as Amazon.gives, which redirects to Amazon Smile, their automated consumer-giving platform. They have also found ways to put domains that were initially purchased for brand protection to good use, including:
  • Amazon.studio, which redirects to their film development division. AmazonGame.studio similarly goes to their game development and publishing arm;
  • Amazon.cloud, which directs businesses to Amazon’s fast-growing Web Services;
  • Amazon.video, which goes to a listing of movies and TV series that Prime members can stream;
  • Grocery.ninja, which redirects to Amazon Fresh;
  • Amazon.blog, which serves users a roundup of Amazon corporate news;
  • Amazon.software and Amazon.pub, which redirect to developer tools and author development services, respectively.
To help protect brands, some registries with multiple TLDs in their portfolio offer services that “block” trademarks from being registered by domain squatters. For those who want to get serious about protecting their client’s mark, one of these registry blocking services is a must.
 
With the largest single portfolio of TLDs, Donuts provides a Domains Protected Marks List (DPML) covering nearly 200 domain extensions. MMX offers a Protected Marks List including 15 TLDs. Rightside Registry just launched an upgrade to its own DPML service, which protects domains on 40 new TLDs. Altogether, this means over 250 domains can be covered using the protection services of just three domain registries.
 
The coverage of protected marks lists extends beyond exact-match trademark terms as well. All the above services also provide the ability to block off variations of the trademarked term, meaning that modern domain name squatters will find it much more difficult to engage in one of their favored tactics, typosquatting, which takes advantage of domain names that could be easily be confused for similar known trademarks.
 
Some trademark protection services also make it easy to “activate” a protected domain, meaning that rather than sitting unused, sales teams and brand managers can be empowered to use the domains for their intended purpose: as powerful marketing tools. Just as Amazon and others have taken their own defensively registered domains and transformed them into active redirects, calls to action, and social media link shorteners, domains protected by DPML can be turned into valuable assets for any brand. All of these newly designed features give trademark owners and their lawyers more flexibility in protecting their brands, while also setting up for the growth of their brands well into the future.
 
Private blocking services are provided in addition to the Rights Protection Mechanisms (RPMs) mandated in ICANN’s new generic top-level domains (new gTLDs) program. The more tools trademark professionals have at their disposal, the more effective they can be at protecting trademarks. This is more important than ever, as new gTLDs are being embraced on multiple fronts. As brands employ more new gTLDs, their customers will become far more accustomed to new domains. This means phishers, counterfeiters, and distributors of distasteful content will soon follow. Now is the time to consider all of your options in the domain name space.
 
To learn more about INTA’s Internet work, please visit the topic portal.

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