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Brandsquatting and new TLDs – do you need to worry?

A brave new world of web addresses will soon dawn upon us. ICANN, the governing body of the domain name system, is currently wading through nearly 2,000 applications for new generic top-level domains, opening up the market to URLS that could end in anything from .baby to .rsvp (13 companies alone have applied for the .app domain). What does that mean for your brand?

A brave new world of web addresses will soon dawn upon us. ICANN, the governing body of the domain name system, is currently wading through nearly 2,000 applications for new generic top-level domains, opening up the market to URLS that could end in anything from .baby to .rsvp (13 companies alone have applied for the .app domain). What does that mean for your brand?

Dan WinfieldSignificant changes to the number and type of domain addresses available are taking place.

You do not need to take any external steps until at least October. But you should be discussing the changes internally and reviewing your approach to make sure you make the right decisions later this year.

Top level domains (like .com, .biz, .net)
There are going to be a plethora of new top level domain names beginning 2013. A list of those proposed is here. Some of these are brands (such as .google) while others are generic platforms (such as .shop and .hotel).

You should review the list and contact us or your usual adviser if any of these names causes you concern.

The list outlines the top level domain names filed for in the first round. There will be a second round at some stage. If you would like to own a top level domain you should contact your usual adviser. Bear in mind that the application fee for the first round was US$185,000 plus an annual license fee of US$25,000 (although that hasn't stopped someone applying for .kiwi).

Second level domains
The owners of the top level domains will be able to license second level domains under their top level domains. For example, if you are the Intercontinental Hotel you might want to license www.intercontinental.hotel from the owner of .hotel.

So, you should review the list of proposed top level domains (here again) and consider whether you might want to license any second level domains under the generic top level domains listed.

Notification and sunrise period
There is, of course, a risk that someone else will try and register your brand as a second level domain, either legitimately because they use the same brand as you in another country, or otherwise.

Partially with that in mind, a 'clearinghouse' has been established that you should consider registering your trade marks on so that:

  • You are notified if anyone applies to register your trade mark as a second-level domain name during the 'sunrise period', which is the period before registration is opened to the general public, and
  • You have the opportunity to register your trade mark as a second-level domain during the sunrise period.

It will be possible to lodge applications for a trade mark to be included on the clearinghouse database from October this year. At this stage it looks like the registration fee will be around US$150 per trade mark.

What you should be doing now
Between now and October you should discuss what second level domains you might want to license, and formulate a strategy around your domain name needs.

Once you have decided which brands you may want to secure as second level domains, check that you have registered these as trade marks. The clearinghouse system will be easier to use where the trade mark is a registered one.

Dan Winfield is a marketing and branding law expert with Duncan Cotterill