New gTLDs May Disrupt Trademark Protection Strategies

by T+B Blog Team on March 21, 2014

The World Intellectual Property Organization (WIPO) is concerned that the launch of new generic top-level domains (gTLDs) will force many companies to revisit their policies regarding online trademark protection, as they will need to reassess their priorities concerning registration and security, the agency said on its website.

WIPO announced that last year it received complaints from 109 countries concerning domain name disputes. Some 13% of the cases were related to country code TLDs, an increase of 1% over the previous year. Most of last year’s filings came from companies engaged in the retail, fashion, banking, and finance sectors, the WIPO data revealed.

In 2012, companies and organizations filed over 1,900 applications for around 1,400 distinct new domain names under the new gTLD program from the Internet Corporation for Assigned Names and Numbers (ICANN). The first new names were provided in October 2013 and as of mid-March their number exceeded 170.

The expansion of Internet domain names will likely have a substantial impact on trademark protection, WIPO Director General Francis Gurry told reporters in a press briefing. Although the true effect of the launch for new Internet domains is yet to be evaluated, he added, it will most likely be disruptive,

As the first new gTLDs have already entered the Internet’s Root Zone, attention is now shifting to the registrations in these domains. WIPO said that it received its first dispute complaint in relation to a newly approved domain (.bike) on February 11 and now expects that the case, as well as other complaints being received, will shed light on how brand owners spend their legal budgets in the new domains.

What measures do you take to protect your IP?

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