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Client Update: .news domain string opens up new brand-jacking threat

14 August 2015

In brief: The recently delegated .news domain string has the potential to impact brand owners universally, particularly now that registrations in the .news domain string are open for general availability. With no eligibility requirements and low registration costs, .news has a high risk of infringement at the second level. Partner Tim Golder (view CV) and Senior Associate Carissa Apps report.

Almost 600 new generic top level domain (gTLD) strings have so far been approved by the Internet Corporation for Assigned Names and Numbers (ICANN) and introduced to the internet. Our previous Focus: Wild wild Web – securing prime Internet real estate and protecting pre-existing trade marks provides comprehensive background information on the ICANN's program, launched in 2012. A full list of the delegated strings can be seen here.

As the list of delegated strings continues to grow, the possibility is fast becoming a reality that opportunistic brand-jackers and cyber-squatters will exploit pre-existing trade marks.

.market

Recently a fake website was launched on the domain name bloomberg.market. This website was designed to mimic the appearance of bloomberg.com, one of the most reputable financial news sources in the world. The fake website published a news story suggesting a potential acquisition of Twitter for US$31 billion was about to take place. Leveraging off the credibility of bloomberg.com, this fictional story quickly spread amongst other news and social media outlets, driving Twitter's stock price up by 8 per cent.

Bloomberg did not take advantage of the sunrise registration period for .market, which gives first priority to brand owners with a prior interest recorded in the Trade Marks Clearinghouse (TMCH) to register their domain. While the website was quickly taken offline and Bloomberg's team was able to inform the public that the website was not theirs, the scenario serves as a prime example of the far-reaching impact that undesirable domain name registrations within the new gTLD strings may have on unsuspecting brand owners.

.news

Since the bloomberg.market scandal, the .news domain string has also become open for general availability. Domain names within the .news string can be registered for as little as A$25 and there are no eligibility requirements. This makes it a highly desirable domain name string for brand-jackers and cyber-squatters.

In the event that an illegitimate party has registered yourbrand.news, you may be able to pursue third-party infringers under the Uniform Dispute Resolution Policy (UDRP) or the Uniform Rapid Suspension (URS).

Under the UDRP, it may be possible to seek the cancellation or transfer of an infringing domain name if:

  1. the domain name is identical or confusingly similar to your trademark; and
  2.  the registrant has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.

The URS applies only to the new gTLDs and is designed to complement the existing UDRP. While it is faster and more cost efficient, the only remedy available is suspension of the infringing domain name. Further, suspension will only be granted in cases of blatant misuse of trade marks.

Summary and recommendations

If you want to be in control of what becomes 'news' in yourbrand.news, we recommend immediately seeking protective registration in that string. If an illegitimate third party has already registered yourbrand.news, then it may be worthwhile seeking advice as to whether the UDRP or URS is available.

As more domain strings go live, we recommend that you keep a close watch on the list of delegated strings so that you can identify which of those strings may impact your business. If you have not already done so, take steps now to  enter your company's registered trade mark(s) in the TMCH so that you can utilise the sunrise registration period and keep one step ahead of potential brand-jackers and cyber-squatters.

For further information, please contact:

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