March 26, 2013, marked a big day for the Internet. The whole Internet.
The Internet Corporation for Assigned Names and Numbers, or ICANN—the nonprofit body responsible for the naming and governance of domain names—launched a service to help businesses protect their brands.
It’s called the Trademark Clearinghouse, and it’s intended to stave off brandjackers (those who hijack your brand for malicious intent) and cybersquatters (those who buy up related/similar domain names, “squat” on them and try to sell them to companies for profit).
Fighting squatters can be costly, and it can take a long time to resolve online trademark disputes. ICANN hopes to help companies avoid litigation headaches by creating an official clearinghouse of trademarks that must be considered with the release of any new generic Top-Level Domain, or gTLD.
More domain options create more opportunities for brandjacking
In 1994, a reporter for Wired Magazine registered Mcdonalds.com. It was one of the first documented instances in which a brand had to go after an individual to secure a trademark used in a domain name. ICANN was created to help govern the use of domains and help brands protect their trademarks online.
A few years ago, ICANN set out to increase online competition and choice by dramatically expanding the number of top-level domains available. So beyond the usual suspects—.com, .eat, .food, .diet—companies will soon be able to choose from hundreds of top-level domains.
But having hundreds of new gTLDs means cybersquatters now have exponential opportunities to exploit the second-level domains that accompany them. (Second-level domains are what’s left of the dot.) For example: in the url, www.McDonalds.com, “McDonalds” is the second-level domain and “.com” is the top-level.
Today, the same Wired reporter could prove how scary this is for trademarks by registering Mcdonalds.eat. Or Mcdonalds.food. Or Mcdonalds.diet.
Trademark Clearinghouse’s approach
To be clear, this is NOT a domain name registration service—this is a trademark protection service. The Trademark Clearinghouse is meant to guard against potential infringement, in two key ways:
- By giving your company first dibs on registering your trademark as part of a new domain. When a new gTLD is ready for release, you have a 30-day sunrise period during which you can register your trademarked name for that gTLD. After 30 days, it is open to the public.
- By notifying your company when an outside entity registers a domain with your trademark. This allows companies to monitor how a domain is being used. If it’s clearly being used to profit off of your brand’s equity—or for malicious intent against your brand—your company can then dispute the registration and ICANN will investigate/cancel such registrations.
What should I do?
First, meet with your legal counsel to determine the best course of action. Should your company decide to register with Trademark Clearinghouse, the cost for doing so is $150 per year per trademark. There are price discounts for registering for multiple years.
Simantel believes that once you’ve built a strong brand, it’s worth taking steps to protect it.
