United States: 5 Steps To Protect Your Brands In The New gTLD Regime

Last Updated: December 23 2013
Article by Joshua S. Jarvis

The time is upon us. After years of anticipation, lobbying for delays and more robust trademark protections, and otherwise steeling themselves against the oncoming tide of new, generic top-level domain names (gTLDs), brand owners are faced with the reality of ICANN's far-reaching program: the first new gTLDs have been "delegated" — received final approval from ICANN for use and availability in the domain name system.

These newly-delegated gTLDs include .guru, .clothing, .ventures, .bike, .camera, .equipment, and .gallery, and others are expected to be delegated weekly over the coming year, eventually resulting in hundreds of new top-level domains. The sheer number of available gTLDs seems daunting, but there are several simple steps brand owners can take to manage the process.

1.  Register Your Trademarks in the Trademark Clearinghouse

As we reported in our last post, two trademark rights protection mechanisms — the "sunrise" period and the Trademark Claims service — are available to brand owners during the launch phase.  The sunrise period of each new gTLD launch will allow trademark owners a first shot of securing second-level domain names (domain names directly "to the left of the dot") corresponding to their trademarks.  The trademark claims service will provide limited notifications to trademark owners when domain names corresponding to their marks are registered by others.  Each of these  protections is dependent on the Trademark Clearinghouse, a repository of verified trademark rights.  If trademark owners do not record their marks in the Trademark Clearinghouse, they cannot register second-level domain names during the sunrise periods of newly launched gTLDs, and will not receive notices of third-party domain name registrations corresponding to their trademarks once the "general availability" periods begin.

At a cost of $150 per mark per year, the Trademark Clearinghouse is essentially a required step for trademark protection in the new gTLD regime, and is highly recommended.

2.  Monitor New gTLD Sunrise Launches

ICANN maintains a list of sunrise and Trademark Claims dates for delegated and forthcoming gTLDs here, and the Trademark Clearinghouse maintains a list of sunrise dates here.  We recommend bookmarking these sites and checking once weekly for new updates.  Sunrise periods of at least 30 days are required by ICANN for each new gTLD launch, but most new gTLD registries appear to be opting for 60-day sunrises.  Brand owners that contract with domain name management companies to handle their domain name portfolios should instruct their providers to assist with monitoring sunrise launches and windows.

3.  Register Your Trademark.gTLD Domain Names During Sunrise and Evaluate Defensive Registration Opportunities

The going price for sunrise registrations seems to be about $100-$150 a pop, though this will vary.  During sunrise periods, brand owners can only register the exact trademarks they have recorded with the Trademark Clearinghouse — for instance, armani.clothing, polaroid.camera, or foleyhoag.lawyer, but not armanishirts.clothing, polaroid-film.camera, or foleyhoagIPLaw.lawyer. Companies should develop strategies to determine in which gTLDsthey will seek such direct-match domain name registrations.  In evaluating whether they should purchase a particular domain name, brand owners should consider prioritizing domain names in their particular industry, domain names that they plan to use or which may have some utility in the future, and domain names that have significant potential for abuse by others.

Owners of well-known or famous marks that have a substantial budget for domain names might consider "defensive" registrations (domain names that they don't expect to actually use) in most or all new gTLDs. Certain registry operators such as Donuts Inc. (which applied to operate over 300 gTLDs!) href="http://www.101domain.com/donuts_defensive_registration_for_trademark_owners.htm"target=_blank> offer defensive registration schemes that allow brand owners to cost-effectively obtain true "defensive" (non-functioning) domain name registrations across multiple gTLDs.

4.  Review Trademark Claims Service Notices and Consider Expanded Surveillance

Once the "general availability" period opens up for a new gTLD, the registry must provide the Trademark Claims service for a period of 90 days.  During this time, brand owners who recorded their trademarks in the Trademark Clearinghouse will receive notices when an individual or entity registers a domain in a new gTLD that corresponds to one of their recorded trademarks. Brand owners that receive such notices should review them carefully to determine whether the registration poses an obvious trademark infringement or cybersquatting risk.  If the risk is not apparent at the outset, brand owners should plan to monitor the associated websites periodically to evaluate possible action, including domain name disputes via the Uniform Domain Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension (URS) system.

It is important to understand that the Trademark Claims service will provide notification of only exact-match registrations, and only for 90 days.  For this reason, companies may wish to engage a brand protection service to provide more comprehensive domain name watching on an ongoing basis.

5.  Develop a Comprehensive Domain Name Acquisition and Policing Policy

Once the general availability periods hit in each new gTLD, domain names will be sold on a first-come, first-served basis, and companies should be prepared to register desirable domain names out of the gate.  Further to the strategy developed in connection with registration of exact-match domain names during the various sunrise periods, brand owners should develop or update their overall domain name acquisition and policing programs to take into account the dramatically expanded domain name space.  In most respects, the general strategies will remain the same as they have always been — register domain names that you need, that you might need, and that are likely to be abused.  However, in the new gTLD regime it will be necessary for all but the most well-heeled companies to exercise significant discretion, likely resulting in fewer domain names registered in each gTLD overall

As the domain name space becomes more crowded, and as the value, viability, and popularity of the various new gTLDs becomes more clear, this policy should be reevaluated and revised accordingly.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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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