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ICANN's Trademark Clearinghouse will not account for 'typosquatting', says expert

Brand owners may face a costly battle to fight 'typosquatters' under a new top-level domain regime, an expert has warned.13 Mar 2013

In 2011 the Internet Corporation for Assigned Names and Numbers (ICANN), the body that oversees the identification of websites, voted to expand the number of generic top-level domains (gTLDs) that are in use from the current 22. Top level domains are the suffixes to addresses and include familiar address endings such as .com, .org and .net.

Last summer ICANN announced that there had been 1,930 applications made for new gTLDs, ranging from '.bank' and '.insurance', to '.store', '.shop' and '.cloud'. Amazon, Google and Microsoft are among the high-profile applicants bidding to operate some of the new proposed gTLDs, whilst many of the new domains have more than one applicant.

Today marks the deadline for businesses, government bodies and community groups to submit their objections to the new gTLDs that have been applied for. If proposed gTLDs are objected to, appointed dispute resolution service providers will consider whether to approve the applications or reject them.

If the new gTLDs are uncontested and unopposed they could launch from as early as next month where prospective website operators would be able to apply to the owners of the new gTLD registries to obtain the right to own domain names rooted at the new domains. Trade mark owners will be entitled to apply to register domain names which are a direct match to their registered trade mark on the new gTLD during a 30 day sunrise period prior to the launch of the new gTLD.

On the 26 March ICANN is due to launch its Trademark Clearinghouse which will also allow brand owners to pay to list their trade marks in an index that new gTLD registrars will be obliged to refer to before allowing new web addresses to be rooted at the new domains.

However, trade mark law specialist Gillian Anderson of Pinsent Masons, the law firm behind Out-Law.com, said that the Trademark Clearinghouse system failed to account properly for brand owners' trade mark rights.

"Under trade mark law, brand owners who register trade marks have, subject to certain conditions, the general right to prevent others using marks that are either identical or similar to theirs," Anderson said. "ICANN's Trademark Clearinghouse will allow brand owners to pay a $150 filing fee in order to have their registered trade marks included in the Clearinghouse database for one year and will provide brand owners with a choice of whether to register domain names that are identical matches to their registered trade marks on a new gTLD. The system, though, fails to account for domain names which may be registered on the new gTLDs which are only similar to the registered trade marks, in other words 'typosquatting'."

"Professional domainers are already well practiced in buying batches of mis-spelled domain names in a bid to confuse internet users into thinking their website is owned, operated or at the very least endorsed by brand owners. This practice of typosquatting impacts on businesses that want to protect the value of their brand and obliges them into contesting others' rights to own websites that infringe on their trade marks," she said.

"With the existing number of 22 gTLDs set to be expanded to a potentially endless extent, brand owners potentially face hundreds of cases where typosquatters could register similar domain names to their registered marks. There will be a number of routes brand owners could take to tackle typosquatters, including accessing the Uniform Rapid Suspension (URS) process to obtain a suspension on the operation of particular domain names, but, this is limited. It would cost brand owners between $300 and $500 in each case to file a URS complaint in an attempt to suspend a domain name from use, but that suspension would only last until the end of the period that the domain name had been registered for and the URS process would not enable brand owners to recover ownership of those domain names," Anderson added.

"Brand owners could invoke ICANN's Uniform Domain-Name Dispute Resolution Policy (UDRP) to lodge a complaint about a particular domain name, but with a filing fee of $1,500 per complaint brand owners face a potential bill of tens of thousands of pounds to enforce their trade mark rights against typosquatters under the new programme of gTLDs," the expert said.  "Of further concern is the fact that the new registries are only obligated to cross reference applications for new domain names to the Clearinghouse database for the first 60 days after the gTLD has been launched, meaning that there is a risk of a considerable spike in identical and / or similar domain names being registered at the end of the 60 day period."

"We will know after the passing of the objections deadline which new gTLDs are set to be launched over the next couple of months. This will give businesses a better idea of the kind of challenges they could face in protecting the value of their brand.  In addition to engaging with the Clearinghouse, brand owners should consider setting up domain name registration monitoring services covering the new gTLDS once they launch so as to be kept aware of the actions of typosquatters under the new regime so as to be in a position to react promptly to enforce their trade mark rights," Anderson said.