Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

With the Launch of Over 1000 New gTLDs Over the Next Year…Is it Time for Brand Owners to Panic?

As we all know, there are already a handful of generic top-level domain names (“gTLDs”) in existence, such as .COM, .CO, .BIZ, .NET, .ORG, .EDU and .XXX, as well as many country code domains, including .CN (China), .JP (Japan), .PL (Poland) and .EU (Europe).  As you may also know, Internet pirates (a/k/a domain name squatters) seek to plunder the trademarks of others by using them in domain names for monetary gain, including the siphoning of Internet traffic from brand owners’ own websites and holding them for ransom.  Many brand owners have dedicated significant time and expense over the past decade (and continue to do so) to defend against these pirates in an effort to control unauthorized use of their trademarks on the Internet, including use of those trademarks in domain names.  With the imminent launch of over 1000 new gTLDs over the next year (possibly 20 per week), those fights may have only been primers for what is about to come for some brand owners.  

As of today, there have been over 1,900 applications filed by third parties for new gTLDs, including .ACCOUNTANTS, .ART, .CONSTRUCTION, .ENGINEERING, .FURNITURE, .SALON, .TICKETS, .THEATER, .TIRES, and so on.  To see the full list, click here.  

The launch of these new gTLDs has been delayed for several years due to brand owners’ and trademark practitioners’ concerns of rampant trademark hijacking and domain name squatting – and the expense and time to defend against such activities.  In an effort to minimize those concerns, the Internet Corporation for Assigned Names and Numbers (“ICANN”) (the entity created to oversee and coordinate domain names) created, what is known as, the Trademark Clearing House (“TCH”).   

What is the Trademark Clearing House (“TCH”)? 

The TCH is a global trademark registry for brand owners to register their trademarks.  TCH providers will verify trademark rights and data and maintain a database with the verified trademark data. 

Two primary benefits of the TCH are that trademark owners that register with the TCH would receive priority with respect to reserving new gTLDs during sunrise periods and receive claims notifications of third parties seeking reservation of domain names that incorporate their trademarks.   

What Trademarks Are Eligible? 

Trademarks that (1) are nationally or regionally registered, (2) have been recognized and validated through a court or other judicial proceeding and (3) are protected by statute or treaty may be registered with the TCH.   

One important aspect of the TCH is that only exact matches of trademarks may be registered, near exact or phonetically equivalent marks (to protect against “typo squatting”) are not eligible for registration.  

What are the Costs for Registering Trademarks with the TCH?

The cost to record marks with the TCH depends upon how many years the reservation is for and how much an agent charges for the recordal.  For a one-year recordal, the registration fee charged by ICANN is $150 per trademark. 

What are Sunrise Periods? 

Sunrise periods will allow brand owners that have registered their trademarks with the TCH to register new gTLDs corresponding with their marks before reservation periods open to the general public.  The aim of sunrise periods is to allow brand owners to “pre-register” their domain names in an effort to keep them away from domain name squatters.    

If a trademark owner plans to register during a sunrise period, it must first submit proof that the subject mark is currently in use, which includes a signed declaration and a sample of how the mark is actually used. 

Should there be competing domain name requests during a sunrise period, ICAAN ultimately wins as the parties would need to “duke it out” at auction.  Highest bid wins.  

What are Claims Notification Periods? 

Trademark claims notification periods follow sunrise periods and run for at least 90 days.  Anyone seeking reservation of a domain name that incorporates a trademark owner’s mark that has been registered with the TCH will receive notification that the reservation request may violate third-party trademark rights.  If the party proceeds with the registration after such notification, a trademark owner would then receive notification that someone has sought registration of a domain name incorporating its mark.  

Once a trademark owner receives such notification it may decide whether to object to the reservation by utilizing the Uniform Rapid Suspension system, a feature of the new gTLDs system, or take other action. 

What Should Brand Owners Do? 

The first step for brand owners is to review the list of applied-for gTLDs and decide if there are any domain names of interest (at least those that correspond to their industry, i.e., Goodyear.tire). 

If a brand owner intends to reserve certain gTLDs corresponding to certain of their trademarks (i.e., for its actual use or as defensive registrations) it should register those trademarks with the TCH.  Those brand owners should then monitor for sunrise periods corresponding to the interested gTLDs to seek reservation of the subject domain name(s). 

Brand owners not planning to reserve domain names that correspond to the new gTLDs, likely need not file their trademarks with the TCH - although reserving top-tier marks now is probably a good idea in the event those plans change.   

If brand owners are only interested in monitoring third-party reservation of domain names that correspond to their trademarks, a better alternative to registering with the TCH is to order a domain name watch from a qualified service provider.  The domain name watch would monitor for any domain name reservations that not only include exact spellings of watched marks but also misspellings and phonetically similar marks.  A domain name watch is relatively inexpensive – only about $250 per year per trademark. 

Although there is much to consider, it is not time to panic.   

However, it is time to understand that there are pirates ready to plunder the trademarks of others with hopes of financial gain.  Although many trademark owners may have bigger fish to fry than worrying about Internet pirates and new gTLDs, brand owners should still take a moment to consider their strategy for defending against potential online attacks to their valuable treasures (a/k/a/ their trademarks and brands).   

Related Trademark Titan Blawg Posts: 

1.  Six Actions Brand Owners Can Take To Prepare For Potential Deluge Of New Generic Top Level Domain Names 

2Uniform Domain-Name Dispute-Resolution Policy (UDRP): To Catch a Cybersquatter  (Includes: Domain Name Squatting vs. Domain Name Speculation)    

3.  Study Suggests That Trademark Owners Need Not Worry About New gTLDs 

4.  Ten Essential Rules for Internet Brand Names

Category: Domain Names

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