What the New Generic Top-Level Domains Mean for Your Brand

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At the beginning of this year, the Internet Corporation for Assigned Names and Numbers (ICANN), the entity that manages the Internet’s global domain name system, began releasing new generic top-level domains (gTLDs) such as .restaurant, .news, .computer, and .coffee. As many as 700 new publicly available gTLDs will roll out through 2015.

While these new gTLDs provide opportunities for brand owners to promote themselves and their products or services, they also present a new avenue for potential fraud and trademark infringement. A greater number of gTLDs means an exponentially increased number of domain name squatting. Accordingly, brand owners must be aware of steps that can be taken to protect their trademark rights.

What can brand owners do to protect themselves?

  • Purchase relevant gTLDs: Try to secure any gTLDs that are highly relevant to the nature of your brand, business and/or its location. Buying the full domain portfolio is not a viable option for most businesses as the cost for these new domains (especially the more appealable domains) can be substantial. Be selective and focus on gTLDs that protects your brand and/or offers potential marketability. For a full list of the gTLDs already available to the public, visit newgtlds.icann.org/en/program-status/delegated-strings.
  • Register your trademark and record it with the Trademark Clearinghouse: To combat such potential problems, ICANN set up the Trademark Clearinghouse (TMCH) which is a relatively inexpensive means of recording federally registered (or its international equivalent) trademarks in a centralized, authenticated database. Recording your registered trademark with the TMCH is important because it allows trademark owners to benefit from the Sunrise Period and the Trademark Claims Service offered by the TMCH.
  • Sunrise Period: Every new gTLD is required to organize a Sunrise Period of at least 30 days prior to the introduction of the gTLD to the general public. The Sunrise Period gives trademark owners, who registered their mark with the TMCH, first priority to register domain names corresponding to their mark.
  • Trademark Claims Service: Even if a trademark owner decides not to register a domain name during the Sunrise Period, it may still guard against third parties’ unauthorized registration of the name by using the Trademark Claims Service. The Trademark Claims Service notifies the trademark owner when a third party applies to register a domain that matches the trademark owner’s mark on file with the TMCH. The Service will also notify the applicant of the trademark owner’s rights. If the applicant registers the domain name, the trademark owner will receive notification of such registration and may take appropriate action.

While the gTLDs provides brand owners with opportunities to stake out new online space with new domain names, it also expands the risk of online infringement, fraud, and cybersquatting. Brand owners should work with their trademark counsel to prepare and implement a strategy that both secures the most obvious domain names and polices their trademark rights in this new environment.


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