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Monday, 31 March 2014

Bad news for brands? It's early days for gTLDs

Got .milk?
The clocks went forward in the UK this weekend which means Spring is in the air, and so is the new era of domain name domination (discussed here). The race is officially on for big brands to register their interest in new generic top level domain names (gTLDs).  To remind readers who are new to the subject: a top-level domain is the part of an Internet address that appears to the right of the last period, for example ‘’. A generic top-level domain is a top-level domain that is not a geographic or national designation (for example, ".com", ".org" and ".net" are all examples of historic gTLDs). On June 20, 2011, the Internet Corporation for Assigned Names and Number’s (“ICANN”) board voted to end most restrictions on the generic top-level domain names (gTLD) from the 22 that were available at the time (including the few just mentioned), which meant that companies and orgainisations would be able to chose essentially arbitrary TLD’s. According to ICANN, Over 1,300 new names or "strings" could become available in the next few years, and in the past few months, names such as ‘.London’, ‘.Christmas.’ and ‘.dating’ have been introduced into the Internet's authoritative database (see most up to date list of names here).

However, as companies rush to register their interest in specific names (and we hereby reserve ipkat.milk), this proliferation of new domain names does come with inherent risks.

Last month, ICANN’s Trademark Clearinghouse observed that domain name abuse is at risk of rising significantly -- and some of the UK’s biggest companies could face danger if they fail to protect their intellectual property, with third parties already seeking to register many domain names relating to British brands' rights.

According to the Telegraph, Trademark Clearinghouse’s data has shown that unknown third party entities have already pre-reserved their interest in registering the domain names of 80 per cent of the UK’s 50 most valuable brand names under the .web domain at websites such as which offer a pre-reservation service for the latest generation of gTLDs. Likewise, third parties have attempted to pre-order 78 per cent of the UK’s top 50 most valuable brands under the .online domain, 72 per cent under .app, 70 per cent under .shop and 68 per cent under .blog. It was stated that brands in the food grocery space were most notable in this regard, with,,, all found to be under the control of an unofficial party.

Jonathan Robinson, Strategic Consultant to the Trademark Clearinghouse, recently stated: 
“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 gTLDs 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.”
There have already been a variety of disputes in the domain name world in recent years. In Michael Toth v Emirates [2011] EWPCC 18, 13 June 2011.), Michael Toth had registered the domain name via Nominet, the UK registry for domain names; Emirates (an airline based in Dubai) used Nominet's Domain Registration Service to contend that it was an abusive registration. Nominet's appeal panel concluded that the registration was abusive and should be transferred to Emirates. Mr. Toth applied to the Patents County Court (now relaunched as the Intellectual Property Enterprise Court) for various declarations, including a declaration that the registration was not abusive. Emirates applied to strike out Mr Toth's claim.  In the end, the court decided to strike out Mr Toth’s claim and the domain name was transferred to Emirates. 

However, disputes have started to arise even more recently since the release of the new gTLD’s. News comes via Dreyfus (see full article here) which stated on February 5, 2014, the domain name ’’ was registered anonymously with, a registrar company, and German company Canyon Bicycles GmbH responded quickly by filing a Uniform Domain-Name Dispute-Resolution Policy (usually referred to as “UDRP”) complaint.  The complaint was dealt with by WIPO who, although they don’t usually take into consideration TLD suffixes such as .fr, decided this case was relevant as the gTLD in question described "a core product of the Complainant”, namely bikes. The Panel found that ’given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.’
Time to protect your brand!

However, it is not all bad news for brands as they are able to protect themselves further by registering their domain name with ICANN’s Trademark Clearinghouse as, once it is registered, the Clearinghouse will then issue a warning ahead of any potential infringement. It costs £92 to record a trademark for a year, £267 for three years, and £446 for five years.

Yet if brands do fail to protect themselves and prevent third parties from registering domains relating to their trade marks, it will follow that consumers are also put at risk by inadvertently buying products from the black market and visiting bogus websites which possible contain malware, as a result of third parties posing as these brands online.

1 comment:

Charles said...

In the above useful post, Michael Toth v Emirates surfaces again. One of the facets of this case which intrigued me was that,
"The appeal panel pointed out that it[the Respondent's website] was very similar to other geographic websites operated by the Respondent and suggested that it had little of value as a source of current, accurate information about the United Arab Emirates." Thus it was not just a case of a name, but the panel didn't think much of the associated website's quality.
"Rather it was primarily a vehicle for click-through traffic." [Hmm. So much like Google, LastMinute or Expedia then].
If anybody wonders what this website looked like, they can use the WayBackMachine:
There we see the main page declares at the top: "The United Arab Emirates Resource Guide" and helpfully adds at the bottom: "Please note that this site is not affiliated with the Emirates Airline". I'm glad I noticed that, I was just about to attempt to book tickets with Emirates Airline.

It is interesting to compare another Emirates domain dispute,
EXPERT DECISION, Emirates v. Günter Neumann, Case No. DCH2013-0018
In this dispute, the Respondent leased space in the Emirates [whoops] Towers for a dental clinic and his website showed pictures related to a dental clinic. Again, this was an obvious place to find information about an airline.

[I understand rumours that the Suleja, Potiskum and Fika Emirates in Nigeria have joined to seek the transfer of all 'emirates' names, are completely without foundation.]

In another airline domain dispute,, an important difference was underlined:
"The Nominet Expert said that if the case were being heard under the uniform dispute resolution policy (UDRP) operated in relation to .com sites, Tyler would probably have won, because that policy says that domain names should be 'confusingly similar' to trade marks or other protected terms. The Nominet policy, though, says they should just be 'similar'." Although was handed over to Ryan Air, it is presently registered to Matty Howard of Maidstone, who is offering it for sale. Advantages of owning the name apparently include: "*Strengthen your marketing strategy *Build your brand online". Right.

At least the new TLDs will allow airlines to fly away from all confusion by acquiring an .aero TLD. The .aero top-level domain was initially approved in 2001 for a 5-year term and is only available to the aviation community. [So eat your heart out Nestlé, no '', '' or '' names for you.]

Finally, what does Esther Dyson, ICANN’s founding chairman, have to say about the new gTLDs?
"It will also create lots of work for lawyers ...
All of this will create jobs, but little extra value. To me, useless jobs are, well, useless."

So that's alright then ;-)

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