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TMCH: cybersquatters are on the hunt
10 February 2014 | London | Reporter: Mark Dugdale
New research from the Trademark Clearinghouse (TMCH) has warned that brands face an increased risk of cybersquatting under the International Corporation for Assigned Names and Numbers’s (ICANN) new gTLD programme.

Almost all of the world’s most valuable brands could suffer from cybersquatting under new gTLDs, according to the TMCH’s research.

The TMCH is an ICANN-designated central repository of submitted trademarks. Brands can register their marks with the Deloitte-run service for £92 a year. Those that do will be notified when someone attempts to register their mark as a domain name under all new gTLDs.

Its research analysed the pre-reservation data of new gTLDs .web, .online, .shop, .app and .blog for brand names featuring in consultancy Interbrand’s ‘Best Global Brands’ of 2013.

The TMCH found that 98 percent of the most valuable brands have been pre-ordered as domain names under .web, and 96 percent under .online.

In the UK, third parties have already pre-reserved their interest in registering the domain names of 80 percent of the UK’s 50 most valuable brands under .web.

Third parties have attempted to pre-order 78 percent of the UK’s top 50 most valuable brands under .online, 72 percent under .app, 70 percent under .shop and 68 percent under .blog, according to the research.

Further analysis revealed that 54 percent of these brands are currently not in control of key domain names across major existing domain extensions.

The findings include examples of familiar brands from the telecoms, financial services and petroleum industries not owning domain names such as virginmedia.biz, rbs.biz and shell.net.

Other brands in the food retail and energy sectors were also notable in this regard, with tesco.co and britishgas.co both found to be under the control of a third party.

With gTLDs such as .bike, .clothing, .guru, .holdings, .plumbing, .singles and .ventures now generally available, Jonathan Robinson, a strategic consultant to the TMCH, fears that brands’ reputations could be under threat.

“Although the new gTLD programme is set to enhance competition, innovation, and consumer choice on the internet, our research shows that some of the UK’s biggest brand names are at risk of IP infringement online as new TLDs are rolled out—with other parties keen to capitalise on the traffic and illegitimate opportunities a branded website will generate. This potentially compromises the reputation of each brand targeted.”

“While some brands may wish to pre-reserve their domains via registrars, this provides no guarantee their name has been secured,” added Robinson.

“The only way of protecting trademarks across all the myriad new domains is to record trademarks in the Trademark Clearinghouse. By doing so, brands can not only be in pole position to secure domain names relating to their trademarks ahead of wider public availability, but they will also be warned if any third party seeks to take control of a domain which matches their brand.”

“We believe that in these instances, prevention is better than cure and cheaper than the costly litigation associated with domain disputes. By recording marks in the clearinghouse, businesses will be safe in the knowledge that they have made the cornerstone investment in brand protection in new TLDs.”

But Stuart Fuller, director of commercial operations and communications at NetNames, commentated that online businesses need to develop a cost-effective trademark policing programme that balances registering trademarks in the TMCH, identifying relevant domains, and monitoring for any infringements.

“Determining the opportunities and threats that each gTLD represents to your business will provide a clearer picture of what domains to register and which trademarks need to be submitted to the clearinghouse.”

“Our advice is to focus on the gTLDs that are applicable to your business or sector and focus on developing an effective domain name policy that allows your organisation to register and operate the most relevant domains that will deliver benefits back to the business through increased online revenues or greater customer engagement.”

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