Trademark holders are able to protect their digital assets from being registered as domain names in a large number of new gTLDs by using blocking services offered by a number of registry operators.
Brand reputation is a valuable asset for every companies, and as such needs to be monitored and controlled as much as possible. Whilst it is almost impossible to have complete control over the image and reputation of a brand, a company can take measures as part of a comprehensive brand protection strategy to protect its good reputation in public.
Domain registrations are an important component of such a strategy. In order to protect their own brand names from abusive registrations, companies could follow a strategy to register their brand names under any TLD and all homoglyphic and typo variants. However, this approach is doomed to failure, as it is unrealistic to consider all variants, and it would be very costly if registrations were made in the 1,500+ available TLDs today.
Whilst such domain protection measures are unrealistic, the aim of a well thought-out trademark protection strategy must be to minimise the risks to the brand holder and their intellectual property online. In terms of domain management, this should encompass defensive measures such as using the blocking services offered by various registries.
A string, label or keyword that contains a brand name or trademarked term in any form is blocked from any future registration as a valid domain name and thus cannot be used for any fraudulent or abuse purpose.
Depending on the blocking service used will determine the number of TLDs that strings are blocked from registration. A number of the blocking providers today also offer extended services which provide blocks over variants of their strings including common typos and mixed script or homglyph registrations.
During the Sunrise Phase of any new gTLD, the Trademark Clearinghouse offers exclusive domain registration of brand names for trademark owners and alerts them to possible trademark infringement and registration of the protected brand name. However, no steps are taken against these registrations and it is up to the trademark owner to consider what, if any, action they take against third-party infringing registrations.
The introduction of hundreds of new TLDs since 2012 has posed multiple new challenges for trademark owners in protecting their IP and has made a preventive Sunrise registration under all TLDs a costly and complex matter.
The blocking services offered by a number of registries provide a more cost-effective and comprehensive alternative to ongoing Sunrise registrations. Instead of registering domain name during the Sunrise period, trademark holders can use their TMCH credentials to block any registrations by third parties in their trademarked terms.
To understand how BrandShelter can create a robust and cost-effective domain name strategy, contact us to arrange for one of our domain name experts to give you a free overview of the health and risks of your domain name portfolio.
BrandShelter is able to provide comprehensive brand protection solutions for your business which include the use of blocking services offered by our registry partners:
The DPML+ service allows trademark owners to block their trademarks from being registered in more than 240 TLDs offered by Donuts Registry. The DPML+ blocking product also offers multiple variant blocking.
UNR EPS/Uni EPS+ guarantees trademark owners extended protection for terms registered in the TMCH, as they are blocked under the more than 20 TLDs of UNR (formerly Uniregistry). EPS+ offers unlimited variant protection.
AdultBlock/AdultBlock+ is the blocking service offered by MMX, which blocks brand names under .xxx, .sex, .adult and .porn. The AdultBlock+ service provides variant label protection.