News

Repercussion of the new gTLDS domains

As we have already been informing, a great revolution is taking place in the online world, since ICANN, the technical coordination body that manages domain names, approved the creation of the new gTLDS domains, the first of which were already available for registration from October 2013.

It is, therefore, now possible to register the trademark under such representative domains as .clothing, .menu, .technology, .voyage, .domains, .company or .viajes (“trips”) amongst others, which means a new way of finding information on the Web.

Given this new panorama, large enterprises and SMEs alike should become aware of the change that this situation will mean, given that, according to a study carried out in August of 2013 by SEDO, a leading company in the sale of domains, regarding the perception of the publicity and marketing sector of these domains within companies, 59% of the experts interviewed consider that these new domains will provide a new, easy and effective way of reaching the user.
However, approximately 54% of the respondents were unaware of this new situation in the online media and, therefore, of its repercussions, perhaps because the anticipated success of these domains will be obtained in the medium and long term.
The results of this study show that it is necessary to provide more knowledge about these new gTLDS, which is why the intention of Clarke Modet & Co. is, again, to inform you about their existence.

Amongst the potential advantages provided by this new type of gTLDS domains is the possibility of creating registration options in other languages such as Chinese, Japanese, Russian or Arabic, in order to promote the diversity of cultures and generate new commercial and business opportunities, by encouraging competition and the choice of the online user.

However, although the appearance of all these new domains will mean a new way of searching for information on the Internet and will increase the possibilities of publicizing the activities of the company, thus making it easier for the web user to obtain information about the trademark and the products commercialized under the same, this new situation will also involve a greater risk of the infringement of the rights of the owners of the trademarks and will mean that it will be necessary to carry out an increased vigilance of the mark on the Internet.

Given this new scenario of positioning on the Internet, it is advisable to establish a new strategy for the protection of the trademark, taking into account the evaluation of its registration under these new domains, depending on the products and services for which the said mark is protected and, therefore, in accordance with the company’s sector of activity, given that these domains will create different communities identifying the owners of the trademarks as belonging to them.

In this way, if any of the new gTLDs should be adapted to the business activities of the company and its commercial interests, the first step recommended would be to register the trademark in the Trademark Clearinghouse service in order to be able to opt for registration of the domain in question during the initial phase, or in Sunrise, destined for the owners of trademarks included in the said database.

However, apart from using mechanisms for the protection of the trademark like the Trademark Clearinghouse, more important, at this time, is the implementation of solutions to detect the abuse of our trademark by third parties.

These solutions are the Watch Services of the trademark as a domain name, by means of which the owners of the trademarks will be able to maintain knowledge and control of any use that third parties might make of the same.

Carmen Sánchez-Puelles