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Icann: Brands Are At Risk of Domain Abuse With New Top Level Domains


Advertisers: That’s exactly what we said when you started this By Katy Bachman

Try to follow this. Icann, the international organization that has begun to roll out hundreds of new generic top level domains over the objections of brands worried about domain abuse, is now warning brands that they are at risk of domain abuse.

At the end of last month, the first of what will be hundreds of new domains (suffixes to the right of the dot in a url, like .guru, .photography) went live, adding to the more commonly-known domains like .com and .net.

Icann’s solution to protecting trademarks in the new Internet domain universe is its Trademark Clearinghouse, a place where brands can register their exact names, but only their exact names, to prevent squatters and fraudsters from expropriating their brand identity on the Internet. The Trademark Clearinghouse is run by Deloitte and IBM, which get get paid if trademark and brand owners sign up.

But companies apparently aren’t rushing to pay the $150/year per domain fee to register each brand.

According to data from the Trademark Clearinghouse released Friday, unknown entities have pre-reserved their interest in registering domain names for every one of the nation’s 50 most valuable brands, as compiled by brand consultancy Interbrand. Research found that brands in the food and beverage space have left themselves most vulnerable with domains like pepsi.us, kfc.in, and kelloggs.net in the control of entities not affiliated with the brands.

“Although the new gTLD program is set to enhance competition, innovation, and consumer choice on the Internet, our research shows that some of the biggest American brand names are at risk of intellectual property infringement online as the new TLDs are rolled out, with many unknown entities eager to capitalize on the traffic and illegitimate opportunities a branded website will generate. This potentially compromises the reputation of each brand targeted,” said Jonathan Robinson, strategic consultant to the Trademark Clearinghouse in a statement.

Robinson’s statement reads likes an indictment from the advertising community, which has been fighting for more trademark protections in the years leading up to the roll out.

“This is just more evidence of why we were encouraging more protections for trademarks,” said Dan Jaffe, evp of the Association of National Advertisers. The ANA was one of more than 160 companies and organizations that had pushed for limited protected registrations that would apply across all the domains as they were cleared to go live.

To Greg Shatan, a partner with Reed Smith who specializes in intellectual property law, it’s a blatant sales pitch. “They’re trying to drum up business. The only way the [Trademark Clearinghouse] gets paid, is if trademark and brand owners are scared.”

The trademark identity problem for brands is just beginning. So far, 84 of the brands included in the Icann study have taken legal action against third parties infringing on their intellectual property online.

Instead of going through Icann, some brands are skipping the Clearinghouse and going directly to take out defensive registrations. Apple, for example, has defensively registered with Donuts apple.guru, iphone.guru, ipad.guru, mac.guru, imovie.camera. Canon defensively registered canon.photography; Target for target.clothing; and Marshalls and TJMaxx in .clothing.


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