Trademark Challenges For Brands As New Domain Names Introduced

by T+B Blog Team on March 6, 2014

Results from new research by the Trademark Clearinghouse (TMCH) suggest that the world’s most valuable brands may face significant trademark challenges with the roll-out of new generic top level domains (gTLDs) by the International Corporation for Assigned Names and Numbers (ICANN). These challenges stem from evidence that domain names related to certain brands could be claimed by third parties.

The study from the TMCH, the ICANN-approved principal source of validated trademarks, looked into pre-reservation data of new gTLDs, including .web, .online, .shop, .app, and .blog for brand names included in Interbrand’s ‘Best Global Brands’ list for 2013. The analysis revealed that 98% of the world’s most valuable brands have been pre-reserved as domain names under .web and 96% under .online, IPPro The Internet reports.

In the United Kingdom, “unknown entities” have pre-reserved interest in registering the domain names of four-fifths of the country’s 50 most valuable brands using the .web domain name and 78% under .online. Third parties have also tried to pre-order 72% of the country’s top 50 best brands under .app, 70% under .shop, and 68% under the .blog domain.

ICANN’s latest gTLD program is intended to improve “competition, innovation, and consumer choice” on the web, but it seems that some of the United Kingdom’s largest brands could be threatened by intellectual property breaches as third parties seek to take advantage of the benefits that a branded website can derive, Jonathan Robinson, strategic consultant to the TMCH, commented. This may hurt the reputation of brands targeted by such parties, he said.

By the end of 2014, ICANN is expected to have delegated 1,400 new domain names to brands, companies, and organizations—significantly expanding the current list of 22.

Are you among the brands applying for a new gTLD?

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