Wednesday, March 27, 2013

Icann launches brand database for trademarks


New net addresses
Firms are concerned that new web addresses will damage their brands

Net address regulator Icann has launched a database to allow businesses to register their brands, ahead of the release of a raft of new domain names.

It is hoped the Trade Mark Clearing House (TMCH) will mitigate concerns about cyber-squatting and trademark infringement.

Nearly 2,000 new suffixes, known as generic top-level domains (gTLD), will be introduced later this year.

Businesses fear that new addresses will compromise their brands.

Suffixes such as .bet, .web. .news will become available from May as alternatives to the well-known .com and .org.

Icann's (Internet Corporation for Assigned Names and Numbers) TMCH will offer companies priority registration for domain names that match their brands during what is known as the "sunrise" period before the names are offered to the general public.

Once this period of 30 days is over, names will be available for anyone, but the TMCH will notify brands when anyone registers a domain that matches their trademarks.

"So, for example, if someone applies for the suffix Apple, Apple will be able to see what the website is selling - whether it is a local orchard or someone selling fake Apple computers," said Jonathan Robinson, a consultant on the project.

"New top-level domain names present a land of opportunity, but there are also threats. Prior to this there has been no universal protection available to brand owners," he said.

"This goes a long way to mitigating the threat," he added.

Firms wanting to add their trademarks to the TMCH will have to pay a fee of between $95 (£62) and $150 (£98) per year per trademark record.

THE TMCH will be operated by Deloitte.

Mr Robinson expects hundreds of thousands of registrations in coming months.
Same price
Jason Rawkins, a partner at law firm Taylor Wessing's trademark group, is not so sure.

"This has been set up for the right reasons, but it is somewhat lacking in teeth," he said.

"Businesses may think they are protected, but this is purely a notification system and it will only notify you if someone registers an exact match, for example Pepsi. But if someone registers Pepsi Cola you wouldn't be told," he added.

In fact so-called watching services, which use third-party firms to keep an eye of domain registrations that may conflict with particular brands, already existed, he said.

"It is about the same price as the service Icann is offering and it will cover you for all close variations not just exact brand matches."

Offering businesses a priority registration was also not as useful as it may sound, he told the BBC.

"Only about 600 of these new gTLDs are open, ie anyone can apply for them - but that is still 600. If a brand wanted to protect itself across all 600 categories it would cost around half a million pounds per year. This is not going to work for most companies," he said.

The new top-level domain names have already courted controversy. There is anger about Amazon's application for the .book suffix and Google's for .search, for example.

An international body set up by more than 50 of the world's governments is overseeing these objections. The Government Advisory Committee will decide in April whether any of the suffixes warrant formal complaints.

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