We were delighted to speak with Salvador Camacho – Attorney in the Social Welfare department of the Mexican Department of Social Security (IMSS). Salvador also has worked for one of the top Intellectual property firms in Mexico – Arochi & Lindner, specializing in IP Enforcement and protection and recovery of domain names for international clients before WIPO and NAF.
We asked him to discuss the topic of digital brand protection in the LATAM market.
Why is digital brand protection important in your professional opinion?
Digital brand protection nowadays is essential in order to develop a strong presence in the Digital Environment. Trademark owners are the principal victims of unlawful online activity regarding domain names such as cybersquatting, typosquatting and new illegal online conduct such as soundsquatting. This situation is not only affecting brands, but also users are nowadays victims of illegal conduct like malware or phishing.
In this context, a digital brand protection strategy not only protects trademarks owners but also their customers.
As an Intellectual Property specialist, what top tips would you give to trademark owners in the LATAM market on protecting their digital assets?
For different reasons, the LATAM market has been lagging behind in regard to the protection of digital assets. Nevertheless, intellectual property infringers have been developing an interesting and valuable market around those unprotected assets for years. In this context, the top tips that I would give are the following:
- Search for professional advice in order to have a better understanding of the value of your digital assets and their subsequent protection.
- Protect your trademark in every country that you are planning to offer your product or service.
- Register gTLDs, ccTLDs and IDNs for your brand even before submitting the application for the trademark.
- Have a strong presence on Social Media. This works not only to avoid fake profiles and bad reputation, but also presents excellent branding opportunities.
- Be aware of the new gTLD’s launching. It is important to register your trademark as domain name before someone gets in there before you.
What common or frequent mistakes do you regularly see trademark owners making in the LATAM market?
The trademarks owners in LATAM are very interested in protecting their intangible assets before the Intellectual Property Governmental Authorities and that is truly important, but they are completely forgetting the Digital Environment. They are registering their trademarks in several countries but only registering one domain name, generally the .COM gTLD. In my experience, this is the biggest mistake from trademark owners in LATAM market regarding digital brand protection.
This situation has generated the proliferation of cybersquatted domain names on ccTLD strings. Therefore, when trademark owners seek to register their trademarks as domain names on ccTLD endings for digital branding purposes, they discover that somebody else has already registered it and is asking a 6 figure number for the domain. There are enforcement methods to recover the domain name, but they are more expensive than defensively registering a domain name. A proactive approach is a more cost-effective option.
What is your opinion of ICANN’s new gTLD program? Should it be viewed as a positive opportunity for scaling businesses who missed out on the .com era due to timing?
In 1974, the French writer Jacques Bergier gave some predictions of the future of telecommunications in his book named “The Planet of Impossible Possibilities”. I will quote him and say that ICANN’s new gTLD program is “The Planet of Infinite Possibilities” because it will change the way that we know, understand and use Internet.
This initiative definitively will affect the LATAM market, specifically for trademark owners, who believe that having just one domain name will suffice. According to SEDO’s new gTLD awareness report published on 2014, 75% of internet users are unaware of the new extensions.
As in any unexplored market, this early stage is an interesting opportunity for scaling digital brands. With extensions such as .LAT (Available on Sunrise period until April 16th) precisely focused on LATAM market, the prompt registration of trademarks as domain names is crucial to have a strong digital brand presence in LATAM Digital Environment.
In terms of controversial gTLD’s like .SUCKS or .FAIL do you think they should be made available to the public?
Actually, only trademarks registrations for .SUCKS are available. The Consumer advocate subsidy goes from $10.00 USD per year but it will be available until September and you will be unable to host a website. The Standard registration will be available on Sunrise period for $249.00 USD per year.
The actual controversy is related to the Sunrise Premium registration of trademarks registered in ICANN’s TMCH. Trademark owners will have to pay $2,499.00 USD per year, so companies like Apple and Yahoo already have bought their respective .SUCKS domains, in order to protect their trademarks. Some trademark owners are calling this business model extortion disguised as registration, but others are appealing to the legitimate right to sell the gTLD at the desired price.
As freedom of speech is one of the pillars of the Internet, I believe they should be made available to the general public. Furthermore, WIPO’s UDRP decisions have granted legitimate interests to owners of sucks or gripe domain names over trademark rights.
Finally, everyone that has been publishing articles for the past few weeks about this controversial gTLD has reached the same conclusion as me: If you don’t want to be a TRADEMARK.SUCKS, then just deliver a good product or service and try not to suck.
dotNice – Experts in digital brand protection
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