The new top level domain names are rapidly becoming
available.1 More than 100 new Top-Level Domains (TLDs)
have been delegated – added to the Internet's Root Zone
and potentially available. Hundreds more will follow over the next
few months as ICANN has said they will be released in batches of 20
a week. A list of delegated domains is available here
The Sunrise periods for these new domain names have commenced.
Sunrise services allow trade mark holders an advance opportunity to
register domain names corresponding to their marks before names are
generally available to the public.
New gTLD registries are required to offer a Sunrise period of at
least 30 days. At the conclusion of the sunrise period the new
domains will be available to the public on a first come basis. In
order to participate in the Sunrise process a trade mark owner must
have a validated trade mark entry in the Trademark Clearinghouse.
It is currently taking 4-6 weeks to complete the process of having
a registered trade mark validated in the Trademark
A listing of the sunrise periods with applicable start/end dates
is available here
First, it is clear that all brand owners should monitor the
status of relevant new TLDs, including the listing of delegated
domain names and sunrise start/end dates. It is important to take
steps now to secure important domain names before others obtain
registrations. There will be important innovative opportunities.
For example TorontoNissan.cars allows alignment between the domain
and the business and is more intuitive then the current choices
Second, consideration should be given to how the brand will be
marketed in new TLD(s) and the timing for doing so. For example,
should the brand be registered as a second level domain name? A new
Internet strategy may need to be developed that focuses on specific
new TLDs. Existing domain name portfolios may need to be
Third, brand owners should monitor the activities taking place
or likely to take place in the marketplace. A brand owner should
closely follow the activities of its competitors as there may be
situations where the use of a new TLD may result in a competitive
Fourth, brand owners should submit their key marks to the
Trademark Clearinghouse so that it will be possible to apply for
sunrise registrations and to allow the registration of brand
name(s) as part of a defensive domain name blocking strategy.
Because so many new TLDs are potentially in play any strategy must
be carefully controlled and applied in light of the potential costs
Finally, the brand owner must monitor potential brand abuse. It
is no longer economic to implement a defensive blocking strategy
for all TLDs and the emphasis will have to be given to specific
domains and monitoringactivities . Consideration should also be
given to which Rights Protection Measures can be used in the event
1 This note is part of a continuing series notes and is
current to January 9, 2014.
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.
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