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Domain squatting and the new gTLDs: What you can do to protect yourself

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Within a couple of days of the first tranche of new gTLDs going on sale in January 2014, domains like adidas.clothing, burberry.clothing and tommyhilfiger.clothing had been registered – but not by Adidas, Burberry or Tommy Hilfiger. Rather, they’d been registered by various individuals all over the globe rushing to cash in on the release of new gTLDs by domain squatting.

Domain squatting is the practice of registering a brand or company name with a domain registrar, and then ‘squatting’ on that domain in the hope that the brand or company whose name you’ve registered as a domain will pay you to get it back. The costs of evicting one of these domain squatters can be significant, as some will hold the domain to ransom, knowing they have your company over a barrel. You can avoid paying the ransom by engaging in litigation, of course – but that might end up being even more expensive than just paying to get your domain back.

In conversation with Forbes in 2014, Brad Newberg told the publication that according to his research, within a few weeks of the .BIKE gTLD going live, 13 of the 20 top bike brands were registered to ‘third parties who seemingly have no relation to the brand owner’.

So if you value your brand name, or company, and want to protect yourself, what are your options? Or if you find that your brand name has been registered on one of the new gTLDs by a domain squatter, what can you do?

The first, and most important action you can take to prevent domain squatters registering your brand name on one of the new gTLDs is to register it yourself! Take a look at the list of new gTLDs, and register your brand against any of them that are relevant to your business. You might not immediately use that domain, but it’s useful to park it and have it in your pocket if you need it.

Trademark Clearing House

You can also deposit your brand name with the Trademark Clearing House, which is a database of verified trademark information. The TMCH is a centralised system, meaning you can claim your ownership of your own brand trademark with them, for a one-time fee, and have that ownership logged, rather than having to do the same thing with multiple individual registries during their domain registration sunrise periods. There is an annual renewal fee to maintain your brand name in the database. If a third-party registers a domain that matches the trademark you’ve deposited with the TMCH, you will be notified.

Uniform Domain Name Resolution Policy

The UDRP was established by ICANN to resolve disputes around the registration of Internet domain names. Resolution involves arbitration proceedings for applications that are abusive or in bad faith. The UDRP system is only available to trademark owners, and the complainant must establish that the domain name is identical or confusingly similar to a trade mark in which the complainant has rights, that the registrant has no rights or legitimate interests in the domain name, and that the registrant has both registered and used the domain name in bad faith. Where the complaint is successful, the domain name can be transferred to the complainant or cancelled. The UDRP system is very well established, and an important resource for trademark owners.

Uniform Rapid Suspension System

Modelled on the UDRP, the URS is designed to be a cheaper and faster alternative to the UDRP proceedings. It applies to all new gTLDs. The URS is faster, it’s true, but it also carries a much stricter burden of proof that a registration was made in bad faith. Remedies under the URS are more limited than those under the UDRP, and the domain name can only be suspended rather than transferred or cancelled.

As you can see, there are a number of ways to safeguard your brand’s name and trademark within the new gTLD system. And if you haven’t registered your brand on any of the new gTLDs, today might be a good time to start doing so!

Main image: bixentro