Many people have not yet heard or may not understand, but the Internet will expand vastly and quickly beyond the familiar .com, .org, and .edu top level domain names. The Internet Corporation for Assigned Names and Numbers (ICANN) launched an initiative in 2008 to enable the introduction of new generic topic level domains (gTLDs). The primary reason for the expansion is to promote competition in the domain name market while continuing to ensure the Internet’s security and stability. Though ICANN’s efforts have not been without criticism, the objective is to expand the number of new gTLDs to increase competition among registry service providers and, in turn, provide greater consumer choice.
ICANN reported receiving 1,930 new gTLD applications during the application window, which closed March 29, 2012. Of those applications 1,815 are active. Most of these new gTLD applications are for generic terms such as .app, .auto, .car, .music, .shopping, .singles. But ICANN also received a subset of applications known as “.brands” created submitted on behalf of brand owners to operate as closed registries (not open to the public) designated specifically for the brand’s use — such as .apple, .chevrolet, .goodyear and .samsclub.
After receiving the applications, ICANN put each application through an initial evaluation period that began in 2012 and concluded in August 2013. The application review process evaluated several factors, taking into consideration the answers to questions regarding financial, technical, registry services or geographic names. Of those 1,930 applications, 1,736 applications passed, 32 went to Extended Evaluation and 121 were withdrawn from the process.
Applications that passed evaluation proceed through the duration of the program based on their complexity. Some applications will move directly to the Transition to Delegation stage, while others will continue through additional steps because they are involved in a dispute that requires resolution or are part of a string contention set, meaning several applicants requested the same string; for example, .app and .home.
What does this mean for businesses?
Soon, businesses, governments and communities will be able to choose which registry they operate in, such as .app, .clothing, .music, .movie, or .shop to name just a few. ICANN predicts this introduction will not change how the Internet operates, but most likely will change the way people find information on the Internet and, most importantly for brand owners, how they will structure and enforce their online presence.
Brand owners who have spent valuable resources protecting their brands on the Internet in the current platform not only will have the usual domain name spaces to police and protect, but also, in the blink of an eye, will have to consider the risk posed by almost 1,400 new gTLDs. This seems like a daunting task, especially for brand owners who are just coming around to this idea or even just learning about this expansion of the Internet.
Fortunately, ICANN has put specific protection mechanisms in place to help protect trademark holders’ valuable intellectual property rights; however, the holders need to take advantage of these services to benefit. New registries are required to offer designated time periods to allow trademark holders to protect their intellectual property rights before the domain name registries are open to the general public, as mandated by ICANN.
Two primary sources of protection, called Sunrise Services and Trademark Claims Services, are built into the Registry Agreement that all new gTLD registry owners must sign. The Trademark Clearinghouse (TMCH) manages these services. The TMCH is a centralized database of verified trademarks that is connected to each and every new gTLD that will launch in the next few years. To benefit from these services, which are summarized below, brand owners must submit their trademark data to the TMCH for verification.
Sunrise Services are an initial period that must last at least 30 days before domain names are offered to the general public. Each new gTLD must hold a Sunrise period that allows trademark owners to pre-register and safeguard the domain names that match their marks. Once the TMCH receives a claim of ownership of a mark, it will verify the data and create an SMD file, which is a unique device that allows the brand owner access to every Sunrise period for every new gTLD.
Trademark Claims Services come into effect after the Sunrise period has concluded. ICANN also mandates these services for all new gTLDs. Trademark Claims Services provide for two notifications to warn domain name registrants and trademark holders of possible infringements. First, if an entity attempts to register a potential domain name related to a trademark already entered in the TMCH, the entity will receive a warning notice that includes the registered trademark and description of goods and services. If that entity receives this notice, then continues to register the domain name, the trademark holder will receive a notification of the domain name registration. This service immediately alerts the trademark holder of possible infringement so the company can take appropriate action.
The first Sunrise period opened Oct. 31, 2013. Several Sunrise periods have opened since then and are in the process of domain name preregistrations for marks already verified in the TMCH. An essential component of brand owners’ ability to combat infringement on the Internet is registering their marks in the TMCH. They also should develop new processes designed to efficiently and cost-effectively protect brands in the new gTLD environment.
Just as trademark owners have engaged in strategic, protective domain name registration in the past — for .com, .org or even .xxx domain names — they should consider using the TMCH to protect their trademarks and service marks, and to avoid future domain name headaches.