Brand Protection Strategies

A few days after ICANN’s new gTLD Objection Filing period closed last Wednesday evening, the first objections are beginning to be made public. The first Legal Rights Objection posted by the World Intellectual Property Organization (WIPO), the designated dispute resolution provider for this type of objection, is over the application for .DELMONTE, Domain Incite reported late last week.

The Legal Rights Objection (LRO) is one of the provisions ICANN put in place in this new gTLD application round to protect trademark holders. The idea is that if an applicant applies for a new gTLD that infringes upon an organization’s existing trademark rights, then that organization can file an LRO to assert its rights. Ultimately, if the applicant has no demonstrable rights to the term, the application can be terminated. The LRO was one of the primary reasons ICANN could assure the trademark community that cybersquatting would not occur at the top level.

But what happens when two organizations have rights to the same mark?

The dispute over .DELMONTE raises interesting issues. The organization that applied for the gTLD is a subsidiary of Fresh Del Monte Produce, Inc., and the objector is Del Monte Corporation. Here in the U.S., we know and recognize Del Monte Corporation as the producers of canned fruits and vegetables, and as the parent company of a handful of other well-known brands. Fresh Del Monte Produce, Inc. makes similar products, but primarily markets them outside of the U.S. and South America. If you visit Del Monte Corporation’s corporate site at DelMonteFoods.com, you’ll notice a disclaimer at the bottom that reads, “Del Monte Foods is not affiliated with Fresh Del Monte Produce, Inc., Del Monte International or their subsidiaries or affiliates. ©Del Monte Corporation.” This is because Del Monte Corporation spun off Fresh Del Monte Produce, Inc. in 1989. Now Fresh Del Monte Produce, Inc. uses the Del Monte mark under a licensing agreement.

Undoubtedly, this licensing agreement will come into play during the dispute resolution over this objection. If it turns out that Del Monte Corporation holds the trademark rights to “Del Monte” and Fresh Del Monte Produce, Inc. does not own separate rights, then we could see the .DELMONTE application tossed out.

Then again, there’s always another option: cooperation. If the two Del Monte’s have coexisted for the past 24 years, both in the global marketplace and the online world, then perhaps there is an opportunity to share the use of the .DELMOTE gTLD. So far, the .DELMONTE objection is the only one that WIPO has posted on its site, but you can bet there will be more published over the coming days and weeks.

Though they have not yet announced when the new gTLD Trademark Clearinghouse (TMCH) will officially open for registrations, providers Deloitte and IBM have published the pricing scheme for those who wish to register their trademarks in the database. Registrations are available to two types: “Trademark Holders,” or individual trademark owners who wish to register their own marks in the TMCH, and “Trademark Agents,” or companies or agencies that represent multiple, individual trademark owners. There are also two types of fee structures, Basic and Advanced, which we break down here. (more...)

At FairWinds, one of the services we offer clients is a sort of “spring cleaning” of their domain name registrations. We know that, especially for large corporations, there are often many different individuals who register domain names – sometimes representatives from various departments within the company, and other times account representatives at partner agencies such as marketing and creative firms. We also know that even when these registrations are made with the best of intentions, after a certain point, things tend to go awry. As time goes on, employees leave and agency contracts expire. And eventually, the company’s network of domain names starts to resemble a tangled web. (more...)

It can be a scary world out there in cyberspace, even for big companies with ample resources. Just ask the likes of Google, Yahoo!, Microsoft and others, who recently saw their domain names ending in .RO, the Romanian ccTLD, hacked. The attack, which hijacked the DNS records of the domain names and pointed them to a server in the Netherlands, came less than a week after Eboz, a little-known hacker group out of Turkey, attacked these and other companies’ .PK (Pakistan) domain names in mid-November. (more...)

If you’re anywhere near the East Coast of the U.S. like we are at FairWinds, then you’re likely in the throes of Hurricane Sandy right now. We closed our Washington, DC office and had our employees work from home today – but that didn’t stop us from thinking about new gTLDs. (more...)

At this point, we all understand that for new gTLD applicants, new domain extensions do not come cheap, especially considering the $185,000 price tag just to submit an application. But what many have not yet come to terms with is the fact that even if companies did not apply for their own new gTLDs, there will be significant costs associated with the rollout of potentially up to 1,409 unique new extensions over the next few years. (more...)

These days, you’d be hard pressed to find a person who owns a personal computer and has a checking account that doesn’t utilize online banking in some capacity, whether to pay their bills, check their balance, or transfer funds. But with the ease and convenience of online banking comes a certain degree of risk, specifically, a risk of fraud. Just as you’d be hard pressed to find someone who doesn’t use online banking, you’d be equally hard pressed to find someone who hadn’t at some point received a sketchy email from a scammer masquerading as a “bank,” luring users to enter their personal and account information. (more...)

In a recent post, we talked about silver bullets – specifically, the belief that new gTLDs would be a magic cure to all search engine optimization quandaries. But after talking with multiple brand owners across a variety of industries, we’ve realized that there is another widely held misconception about a cure-all solution circulating around the business world. This time, it’s about the new gTLD Trademark Clearinghouse, or TMCH for short.

Many brand owners believe that if they register their trademarks in the TMCH, then ICANN will block the registration of all domain names containing those trademarks across all new gTLDs.

Oh, if life were that simple. (more...)

Today, Managing IP published an article that posed the question, “How can I make the most of the potential new gTLDs?” The body of the article featured opinions from three different individuals: a .BRAND applicant, an Intellectual Property lawyer, and a consultant. That consultant was FairWinds’ very own Vice President of Consulting Services, Liz Sweezey.

In her piece, Liz writes that businesses can make the most of new gTLDs by being proactive, realistic and tactical: proactive in building a strategy for their own new gTLDs, determining which new gTLDs to register defensive second-level domains in, and becoming aware of and involved in ICANN strategy; realistic in allocating a sufficient budget to protect their brands and trademarks; and tactical in establishing a set of policies and best practices for registering new domains.

Managing IP is only available with a subscription, but you can read a screen shot of the article here.