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Big brands at risk of cyber squatting as new domain names go live

Britain’s most valuable companies are potential targets for cybersquatters in 2014 and beyond, with domain names such as .web and .online set to go live.


New research from ICANN’s Trademark Clearinghouse has revealed that domain abuse is at risk of rising significantly.
During 2014, a plethora of new generic Top Level Domains (TLDs) will appear online and some of the UK’s biggest companies could be at risk of failing to protect their intellectual property, with many domain names relating to British brands already being sought by third parties.
According to the Trademark Clearinghouse’s data, unknown entities have already pre-reserved their interest in registering the domain names of 80 per cent of the UK’s 50 most valuable under the .WEB domain name. Similarly, third parties have attempted to pre-order 78 per cent of the UK’s top 50 most valuable brands under the .ONLINE domain name, 72 per cent under .APP, 70 per cent under .SHOP and 68 per cent under .BLOG.
Jonathan Robinson, Strategic Consultant to the Trademark Clearinghouse stated: “Although the new gTLD programme is set to enhance competition, innovation, and consumer choice on the Internet, our research shows that some of the UK’s biggest brand names are at risk of IP infringement online as new TLDs are rolled out – with other parties keen to capitalise on the traffic and illegitimate opportunities a branded website will generate. This potentially compromises the reputation of each brand targeted.”
Further analysis revealed that 54 per cent of these brands are currently not in control of key domain names across major existing domain extensions. The findings include examples of familiar brands from the telecoms, financial services and petroleum industries not owning key domain names such as virginmedia.biz, rbs.biz and shell.net. Other brands in the food retail and energy sectors were also notable in this regard, with tesco.co and britishgas.co both found to be under the control of a third party.
The scale of the imminent problem is further highlighted by the fact that 72 per cent of the brands studied have already taken legal action against third parties infringing on their intellectual property online, via ICANN’s Uniform Domain Name Dispute Resolution rights protection mechanism.
“While some brands may wish to pre-reserve their domains via registrars, this provides no guarantee their name has been secured. The only way of protecting trademarks across all the myriad new domains is to record trademarks in the Trademark Clearinghouse. By doing so, brands can not only be in pole position to secure domain names relating to their trademarks ahead of wider public availability, but they will also be warned if any third party seeks to take control of a domain which matches their brand. We believe that in these instances, prevention is better than cure and cheaper than the costly litigation associated with domain disputes. By recording marks in the Clearinghouse, businesses will be safe in the knowledge that they have made the cornerstone investment in brand protection in new TLDs”, Robinson added.
The Trademark Clearinghouse’s research analysed pre-reservation data for major new gTLDs .WEB, .ONLINE, .SHOP, .APP and .BLOG, identifying which domain names associated with the 50 top companies included on the Brand Directory’s ‘Most Valuable British Brand’ list have been pre-ordered. In addition, the research identified which of these companies do not own domain names containing their brand name across the 20 most used existing gTLDs.
www.icann.org

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