26.02.2014

eco Association: Small and Medium-Sized Companies Must Prevent Trademark Violations with the New Domains

  • Registered Trademarks should be registered with the Trademark Clearinghouse
  • Free consultation opportunity on 4 March from 10am until midday via telephone, email, twitter and Facebook

Sunrise – this is the name of the phase during which trademark owners can secure domain endings before they are made available to the general public, and that phase is now! A new era is beginning in the Internet: Since the end of 2013, on average two new generic Top Level Domains (gTLDs) like .web, .nike, .sport or .berlin have been coming onto the market each week. The largest introduction of new endings in the history of the Internet Corporation for Assigned Names and Numbers (ICANN) is now in full swing. At the end of this marathon, the Domain Name System (DNS) will be more than 1,400 endings richer worldwide.

“The new diversity offers especially brand owners and companies a large range of new web addresses. At the same time, they need to meet new challenges in the protection of their brands,” explains Thomas Rickert, Director of Names and Numbers in the eco Association. “New gTLDs also pose a potential threat to intellectual property.” Ultimately, there will be a multitude of opportunities for unauthorized third parties to occupy domains with well-known brand names – so-called “cyber-squatting”.

Trademark Clearinghouse should avoid violations of trademark rights

In order to curb the occupation of new domain endings through third parties, ICANN established the Trademark Clearinghouse (TMCH) in March 2013, so that brand owners can protect and exercise their rights during the DNS expansion. “Despite this important function, the demand so far has been slow. In January 2014 there were only 23,000 entries recorded in Germany,” warns the domain expert Rickert of the careless treatment of registered trademark rights.

Wake up! – The Sun is rising!

The introduction of every new gTLD begins with a prescribed “sunrise phase” of at least 30 days. Anyone who has recorded their brand in the TMCH can register “their” domain during the sunrise phase. Only after this phase will the domains be offered in the public sphere. In Germany, two regional domains have begun their sunrise phases – .ruhr on 21 January and .berlin on 14 February.

Smaller companies not well prepared

An analysis by the consultants DOTZON GmbH of the brands recorded in the Trademark Clearinghouse shows that many German companies have not yet become aware of this important development in the Internet. The data from the Trademark Clearinghouse operated by Deloitte and IBM indicate that although 70 percent of DAX corporations are using this instrument for their brand protection, only 10 percent of TecDAX companies are.

eco offers free consultation opportunity on the topic

Thomas Rickert advises acting quickly: “eco recommends that companies should check whether a registration with the Trademark Clearinghouse would make sense for them. Brand owners should have an interest in avoiding damage to their brands through external registrations. In addition, many companies have brands identical to those which have been registered in favor of third parties in other countries, or in other classes of product or service. Anyone who does not want to miss out on their chance must act quickly, so that the “greatest sunrise of all time” does not become the greatest let-down of all time for brand owners.”

Rickert and other experts will be answering questions on the topic Trademark Clearinghouse on Tuesday 4 March, from 10am to midday. They can be reached over the following channels:
Email: presse@eco.de
Telephone: +49 221 7000 480
Facebook: https://facebook.com/ecoassociation
Twitter: https://twitter.com/eco_de