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Client Alert - Protect and Leverage Your Brand in the New Generic Top Level Domain Names

01.07.2014

Introduction

The first new generic Top Level Domains (gTLDs)—the part of a domain name to the right of the last dot, such as .com and .net—have officially launched.  Brand owners should determine how best to protect and leverage their brands as Second Level Domains (SLDs) in these new name spaces (e.g., [yourbrand].newgtld).

As each new gTLD launches, brand owners should determine whether (1) to register their brand as a SLD with the new gTLD and actively use the domain name to market and promote their goods and services or (2) to prevent third parties, such as cybersquatters, from registering the same, which can be accomplished through individual defensive registrations or mass “blocking” services offered by some new gTLDs. 

While each situation is unique and brand owners should consult with counsel and their marketing staff when making these decisions, below are some general guidelines all brand owners should consider.     

Background

The Internet Corporation for Assigned Names and Numbers (“ICANN”) recently became concerned that the twenty-two gTLDs currently available—such as .com, .org, .net, .gov and .edu—could not sufficiently support the future growth of the Internet.  After years of analysis and planning, on January 12, 2012, ICANN began accepting applications to register nearly any term in nearly any language as a new gTLD.  

On June 12, 2012, known as “Reveal Day,” ICANN announced that it had received over 1,900 applications for over 1,400 different potential new gTLDs.  ICANN already has approved hundreds of non-contested gTLDs, several of which already have launched.

First Wave of New Domain Names and Sunrise Periods

Donuts, Inc., a company that applied for over 300 new gTLDs, launched the first English language gTLDs at the end of November.  These gTLDs—.bike, .clothing, .guru, .holdings, .plumbing, .singles and .ventures—each entered their “sunrise” registration phase on November 26, 2013.  A week later, on December 3, 2013, Donuts launched the sunrise periods of another six new gTLDs: .camera, .equipment, .estate, .gallery, .graphics, .lighting and .photography.  By December 31, 2013, Donuts had launched the sunrise phases for at least the following additional gTLDs: .contractor, .land, .technology, .construction, .directory, .kitchen, .today, .diamonds, .enterprises, .tips, .voyage, .shoes, .careers, .photos, .recipes, .limo, .domains, .company and .cab.

Click here for a list of all announced prior and forthcoming new gTLD launch dates.

During these “sunrise” periods, brand owners who have registered and verified use of their brands with the Trademark Clearinghouse can apply to register their brand as a SLD in the new gTLD before the general public.  While each new gTLD launch will have different rules, for each of these new Donuts gTLDs, the sunrise period will last sixty days.  Registrations will not be granted on a first come, first served basis.  All applications will be processed at the end of the sunrise period.  If more than one person has applied for the same domain name in the new gTLD, the domain name will be put up for auction and sold to the highest bidder among the applicants. 

After the sunrise period, domain names in the new gTLDs will be allocated to the general public on a first come, first served basis.  Brand owners who want to use their brand with these new gTLDs for marketing purposes or  to register their brand defensively to curtail cybersquatting thus should apply to register their brands as SLDs in the new gTLDs as soon as possible and during the sunrise period.

The Trademark Clearinghouse

In order to register your brand as part of a domain name in a new gTLD during the sunrise period, you must first register and file proof of use of your brand with the Trademark Clearinghouse.   With limited exceptions, brand owners must have a trademark registration in order to register their brands with the Trademark Clearinghouse.  In addition to taking advantage of the sunrise registration periods, brand owners who have registered with the Trademark Clearinghouse will receive notice if someone tries to register their brand as a domain name with a new gTLD after the sunrise period.

What New gTLD Domain Names Should a Brand Owner Register?

Determining what new gTLD domain names to register is an individualized process that should be made in conjunction with a brand owner’s marketing department and counsel.  Here are just a few questions to consider:

•  Does the new gTLD relate to my industry, goods or services?

          e.g., .law, .news, .accountant, .insurance, .sports, .financial, .doctor, 
          .books,  .fashion, .makeup, .tickets, .movie, .art, .golf, .flowers,
          .music

•  Does the new gTLD pertain to a geographic location with which my
   brand is associated?

          e.g., .nyc, .paris, .dubai, .istanbul, .tokyo, .sydney, .london, .berlin

•  Does the new gTLD represent an industry, good or service with which I
    do not  want my brand associated?

          e.g., .porn, .sex, .adult, .beer, .casino

•  Is the new gTLD a corporate designation that applies to my company?

          e.g., .inc, .ltd, .spa, .sarl, .gmbh

Brand owners should review the full list of new gTLD applications at their earliest convenience so they are prepared to make a decision as each approved new gTLD that will be open to the public launches.

Obtain a Blocking Registration

As an alternative to separately registering your brand defensively as an SLD in one or more gTLDs, the aforementioned Donuts is offering a “blocking” service for all of its new gTLDs known as the Domain Protected Marks List (DMPL).  The DMPL, which costs significantly less than multiple individual defensive registrations, allows brand owners to prevent third parties from registering a new gTLD domain name containing or comprising their brand.  However, the DMPL will not prevent another company that shares your brand name from registering their brand as an SLD during the sunrise period. 

Brand owners must be registered with the Trademark Clearinghouse in order to take advantage of the DMPL.  And brand owners can convert their blocked brands to active domains for a fee should they later decide to use them.  Thus, the DMPL allows brand owners to block now and subsequently change their minds, buying them time to determine whether to use their brand in a new gTLD domain name for marketing purposes.

Conclusion

With the launch of the new gTLDs and pending sunrise periods, brand owners should decide as soon as possible what new gTLD domain names they want to use and prevent others from using.  If they have not done so already, brand owners should register their trademarks with the Trademark Clearinghouse.

For further information on how to leverage and protect your brand in connection with the new gTLDs, including registering with the Trademark Clearinghouse or Donut’s blocking service, please contact Eric Shimanoff (ejs@cll.com) or your attorney at CLL.

Click here for a printable version of this Client Alert.

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