Time to revisit your domain name strategy?

Posted on 16 November 2015

Infringement across the domain name space

In the last two years, following the introduction of new generic top level domains (gTLDs) such as .london or .feedback, we have seen a huge expansion of the domain space. Since October 2013, the number of available gTLDs has increased from 22 to more than 800, with more to come. As the domain space grows in complexity, it is harder for brands to navigate and increasingly boards of directors are demanding a domain strategy to match.

According to statistics published by RetailMeNot and the Centre for Retail Research, in 2015 online retail is expected to account for more than 15.2% of all retail sales in the UK, making UK consumers the most frequent online shoppers in Europe. For many brands this figure will be in excess of 50%. As the value of online sales increases, brands are changing their approach to the investment they are prepared to make in preserving or securing prime online real estate with many investing at least the equivalent of the annual rent for a flagship retail store to protect their core domains. 

As online consumers become more sophisticated, new trends are emerging.  For example, many brands have seen that online users are more likely to be converted to online purchasers via their country specific domain name than if they are browsing a '.com' site. Just as every successful company should have a well thought out trade mark strategy, identifying key territories and brands to get the best value protection for their budget, so too it is important to analyse the domain space, registering the most effective domains for your business. 

We are also seeing changes in the way that brands are enforcing their trade marks against infringing domain name registrations.  In the early days of the internet the traditional route was to bring trade mark proceedings in the courts. This has mostly now shifted to the cheaper and often faster uniform dispute resolution procedures managed by WIPO, EURid and Nominet to name a few. We expect this to change again now that ICANN has introduced new procedures to facilitate rapid suspension of infringing domain names, but also the UK courts can now be used to obtain blocking injunctions against serial infringers, which are implemented by ISPs blocking access to the domains in question. The list of domain names can be updated relatively easily as and when the infringer registers new domains, overcoming the challenge often met by brands when they take down 10 infringing domains only for the infringer to register 50 new ones a week later. 

If you would like to know more about any of these issues, Mishcon de Reya and BrandIT are co-hosting a seminar at 6pm on Wednesday 25 November, which will provide an overview of the latest developments and trends in the domain space, including a focus on emerging markets.  Please click here to RSVP.

Article co-written by: 

Colin Darbyshire, CEO of BrandIT UK

Sally Britton, Partner, Mishcon de Reya

Peter Nunn, Legal Director, Mishcon de Reya

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