Australia: Protecting brands in new generic Top-Level Domains (gTLDs)

Last Updated: 13 August 2013
Article by Chris Bevitt

New generic top-level domains (gTLDs) will be introduced in the near future with the initial evaluation of applications anticipated to be completed by August 2013. For brand owners, there will be new ways to protect their trade marks from conflicting domain names within these new gTLDs. Failure to take appropriate measures may result in loss of brand protection in these new domains or the need for dispute resolution activities to regain control of the brand.

What is a gTLD?

The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for the domain name system. For example, you may reach our website by typing "" into your internet browser. The ".com" part of the domain name is a top-level domain. Other top-level domains include ".gov", ".edu", ".org" and ".net".

ICANN will launch a large number of new gTLDs in the near future. Some of these include ".app", ".inc", ".book", ".shop", ".cloud", ".ltd", ".news", ".store" and ".web". The new gTLDs will be operated by third party registry operators under contract with ICANN.

What do the new gTLDs mean for brand owners?

Due to the creation of the new gTLDs, there will be more opportunities for third parties to register domain names that may be adverse to a brand owner's trade mark rights. With a large number of gTLDs, it would potentially be more difficult to police domain name squatting or typo squatting.

To counteract this, ICANN has introduced the following new protection mechanisms for brand owners in the context of the new gTLDs:

  • Trademark Clearinghouse (Clearinghouse) – a repository of verified trade mark information which gives brand owners exclusive priority registration opportunities and notification for identical conflicting domain names;
  • Uniform Rapid Suspension System (URS) – an inexpensive dispute resolution process for conflicting domain names that is similar to the Uniform Dispute Resolution Policy (UDRP);
  • Post-Delegation Dispute Resolution Procedure – an alternative dispute resolution process for conflicting gTLDs or second-level domains where action is taken against the registry operator.

These mechanisms are in addition to the dispute resolution process available under the UDRP. While the URS is cheaper than UDRP, its usefulness is somewhat limited because the remedy for a successful complainant is suspension of the domain name rather than transfer to the complainant. Accordingly, URS is not a substitute for UDRP but may be suitable as a preventative measure. The remainder of this article will focus on the Clearinghouse, which gives some unique benefits to brand owners.

What can the Trademark Clearinghouse do for brand owners?

The Clearinghouse confers two main advantages to brand owners of verified trade marks:

  • brand owners have an exclusive priority registration period (known as the "sunrise" registration period) of at least 30 days before public launch of a new gTLD, to register domain names that are identical with the verified trade marks;
  • brand owners have a notification period (known as the "claims" period) of at least 90 days after public launch of a new gTLD during which notice of the owner's trade mark rights will be given to a prospective registrant of an identical domain name and, if the domain name is registered, notice will be given to the brand owner.

With the exception of deciding disputes between brand owners during the sunrise registration process, the Clearinghouse does not offer a domain name dispute resolution process. Once a conflicting domain name has been registered, the brand owner must resolve the dispute through other means, such as UDRP, URS or formal legal action.

How does a brand owner record its trade marks with the Clearinghouse?

In order to record its trade marks with the Clearinghouse, the brand owner must meet certain eligibility criteria. Briefly, the criteria are:

  • the trade mark in question must fall within one of the following three categories:
  • a national or multi-national registered trade mark;
  • a trade mark validated by a national-level court; or
  • a trade mark protected by statute or treaty; and
  • the brand owner must give certain information to the Clearinghouse to verify the validity of the trade mark.

The brand owner must also pay a fee for participation in the Clearinghouse. At present, the basic fee structure for a single trade mark is USD150 for one year, USD435 for three years and USD725 for five years. There are volume discounts for large numbers of trade marks.

If the brand owner elects to participate in the Clearinghouse and wishes to have the benefit of exclusive priority registration ("sunrise" registration), it must submit a declaration of use and a single sample of proof of use along with the domain name registration fee.

How are conflicting domain names identified by the Clearinghouse?

Domain names are only identified by the Clearinghouse notification process if they are "identical" with the verified trade mark in accordance with its matching rules so there are significant limits on the usefulness of the Clearinghouse. Note that there is a dispute resolution process for disputes between owners of identical trade marks which could be identical registrations in different trade mark classes in one country or registrations in the same class but in different countries.

An "identical match" means the domain name (excluding the gTLD) is an identical match with the textual elements of the verified trade mark. (For example, "shelston.gTLD" is identical with the trade mark SHELSTON.)

A plural form of a trade mark is not an identical match. (For example, "shelstons.gTLD" is not identical with the trade mark SHELSTON.)

Special characters are either omitted or replaced with hyphens. (For example, "shelstonip.gTLD" and "shelston-ip.gTLD" are identical with the trade mark SHELSTON=IP.)

The "at" symbol (@) and the ampersand symbol (&) in a trade mark may be written in the official language(s) of the jurisdiction in which the verified trade mark is protected. (For example, "ipatshelston.gTLD" is identical with the trade mark IP@SHELSTON.)

Should the brand owner record its trade marks with the Clearinghouse if it already uses a domain name watching service?

A brand owner should find out whether their existing watching service will monitor the new gTLDs when they launch. If its existing service will monitor the new gTLDs, then the only benefits of the Clearinghouse are the exclusive priority registration ("sunrise" registration) and the notification of trade mark rights to prospective registrants of identical domain names.

A brand owner's existing watch service may in fact identify more conflicting domain names because the Clearinghouse is limited to identical domain names in accordance with its matching rules.

Also, the Clearinghouse's notification process is limited in duration to a certain period (of at least 90 days after public launch of a new gTLD), whereas a brand owner's existing watch service may be ongoing.

The Verdict

Many brand owners are likely to view the new gTLDs more as a nuisance than an opportunity given that the effect of the new domains is to add further complexity and expense to brand protection. However, the new gTLDs will shortly become a reality so brand owners must consider what action they consider appropriate to ensure that their brands are protected (as far as possible) in the new domain spaces.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP has been awarded the MIP Global Award for Australian IP Firm of the Year 2013.

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