United States: The New gTLDs Are Here. Are You Ready?

Last Updated: November 23 2013
Article by Gregory S. Shatan

While you are reading this, the Internet is changing. Over the past several years, you may (or may not) have heard that the number of Top Level Domains (such as .com, .net, .eu, etc.) was going to grow exponentially at some point in the future. Well, the future is here.

The first of the "new gTLDs" opened for registrations October 31 for a trademark "Sunrise" – dotShabaka, an Arabic domain (technically, شبكة.) – which is the generic name in Arabic for the Internet. On November 26, the first English language new gTLDs will begin their Sunrise Periods – .bike, .clothing, .guru, .holdings, .plumbing, .singles, and .ventures. (A Sunrise is a period during which trademark owners can register domains matching their trademarks, typically for a higher price than during the general registration period.) This is only the beginning. We can expect new Sunrise announcements on a regular basis – up to 20 a week or more – until approximately 1400 new gTLDs are delegated over the next two to three years.

Domain Registration and the TMCH

If you want to register domains during a Sunrise, you can't just show up on Day One with your credit card. Only trademarks registered in the Trademark Clearinghouse (TMCH) need apply. In addition to Sunrise eligibility, a TMCH register will trigger trademark "Claims Notices" if a third party tries to register a domain name matching your TMCH-registered trademark. The third party will receive a notice that the domain name it is attempting to register matches a trademark in the TMCH; if the third party goes forward, the trademark owner will be notified of the registration. The Claims Notice period for each new gTLD ends after 90 days of general registrations, so it is not of great utility, but it is better than nothing.

The TMCH was established by ICANN (Internet Corporation for Assigned Names and Numbers) and is run by Deloitte and IBM. The TMCH has been accepting registrations since March, but the pace of registrations has been slow until recently. From March to October, only about 13,000 trademarks were registered. However, the pace has picked up since the new gTLD launch became imminent. Now, about 1,000 trademarks a week are going into the TMCH.

TMCH registrations are based on existing trademark registrations. (Court decisions, statutes and treaties may also form the basis for a TMCH registration, but these are unlikely to be a big source of registrations.) While TMCH registrations are not costly (TMCH "agents" will charge about $250/year), a robust trademark portfolio registered for three years can add up to a sizable bill.

Unless you want to "go for broke" (literally), you will need to decide which trademarks in your portfolio will be submitted to the TMCH. Of course, you should consider which new gTLDs may interest (or concern) you and the domain names you would like to register in those new gTLDs. You should also be considering which trademarks are already registered as domain names in existing gTLDs, and which trademarks are most important to your business or organization. Playing defense, you should consider which trademarks are most likely to be registered by third parties, including legitimate rightsholders, cybersquatters, cybercriminals and (if your mark is also a real word or a surname) people who view your mark as a "generic" word or phrase. Variations and translations will need to be registered separately. Trademark counsel, marketing departments and IT will need to work together to form a strategic list.

Once you have your list, you should work with trademark counsel and a TMCH agent to register your marks in the TMCH. When all goes smoothly, it should only take a couple of weeks to get a registration. However, a significant number of registrations are rejected initially, and the issues identified by the TMCH need to be resolved. This can extend the time for registration by days or weeks.

Protecting and Maintaining Your Brand

You will also need to revisit your online brand protection strategy (or create one, if you don't have one already) to take the new gTLDs into account. You should set up watching services and other monitoring programs in some or all of the new gTLDs to police your marks. Here again, you will need to decide which gTLDs and which marks are the most relevant to your business or organization.

Of course, there are opportunities as well as issues in the new gTLDs. A number of the new gTLDs are aimed at specific products, services, industries or geographic areas. Some of these new gTLDs may become primary destinations for the relevant companies and Internet users – or they may fail. If there is one that fits your business, pay close attention, consider registering one or more domain names in the new gTLD, see if it's something you can use in your business, and see if the registry succeeds in building a reputation for that gTLD.


When should you do all this? If you haven't started already, you should get started.

When should you register in the TMCH? Since it takes at least a couple of weeks to get a TMCH registration, and the first English-language Sunrise periods are starting in less than a week, the time to register in the TMCH is NOW.

The future is here.

This article is presented for informational purposes only and is not intended to constitute legal advice.

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