AIPPI 2013: Protecting brands in the new gTLD programme


AIPPI 2013: Protecting brands in the new gTLD programme

Brand owners across the world have been encouraged to take full advantage of the first new generic top-level domains (gTLDs) and ensure their brands are adequately protected.

ICANN's new gTLD programme was the subject of discussion at this year’s Association for the Protection of Intellectual Property meeting in Helsinki, Finland.

The first four new gTLDs (of more than 1,000) to sign registry agreements with ICANN were .شبكة  (Arabic for 'web' or 'network'); .онлайн (Russian for 'online'); .游戏 (Chinese for 'game'); and .сайт (Russian for 'website').

New gTLDs will be added to the domain name system at a rate of around 20 per month from the end of this year.

Bruce Tonkin, chief strategy officer at Melbourne IT in Australia and vice-chair of ICANN’s board of directors, explained how brands could use the programme to their advantage.

“When you consider how we use addresses today it becomes clear why a TLD would be beneficial,” Tonkin said.

“By going through a search engine you are not getting a specific result but putting your query to someone else. With this system, there is the potential for alternative sites to crop up and you find yourself getting diverted.

“As a TLD owner you want people to find you directly. By having a recognisable short name people can then type that into the search engine and be taken directly to the link without the risk of competitors showing up. 

“For example, someone could search for '' rather than attempting to find the current complicated address ( or searching for 'IKEA kitchens' in a search engine, which could guide you elsewhere.”

Tonkin added that some multinational stores could benefit from a geographic gTLD or a festive one such as .christmas.

According to Kevin Smith, partner at law firm Sughrue Mion PLLC in Washington, DC, in order to ensure protection early, trademark owners should make use of the sunrise registration period, which is supported by the Trademark Clearinghouse (TMCH).

“This allows the owner to say 'I own this and no-one will be able to get it'. Trademark owner gets first dibs before the application procedure goes out to the public."  

However, Smith warned brand owners to remain vigilant given that the TMCH will only accept sunrise registrations for words that exactly match a mark and would not stop another party from registering a mark with a confusingly similar name.

“It should be a top priority for brand owners to focus their efforts on participation in the TMCH in order to be ready for launch of the first sunrise, expected in October 2013,” Smith added.

This article was first published on 09 September 2013 in World IP Review


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