The Internet Corporation for Assigned Names and Numbers (ICANN) announced this week at ICANN 49 Singapore that the number of new generic top levels domains (gTLDs) that have been “delegated” — i.e., designated as ready for launch — now tops 175. Recently delegated gTLDs include:

  • .london
  •  .nyc
  • .cologne
  •  .trade
  •  . 世界 (Chinese for “world/shijie”)
  •  .bid
  • .vote
  • .reviews
  • .events
  • .democrat
  • .education
  • .coffee
  • .florist

The ICANN website shows the complete list of delegated gTLDs. As this number climbs, it becomes increasingly and even alarmingly important for trademark owners, regardless of whether they have vast or small trademark portfolios, to take action so they have the ability to receive notice and protect their registered marks in the rapidly expanding Internet.

What does delegation mean to brand owners?

Logistically, delegation means that the gTLD registry can begin the “Sunrise” period. For trademark owners however, delegation signals that the battle to quash unauthorized use of domain names has begun.

The gTLD program incorporates protection mechanisms that allow IP rights holders to proactively arm themselves in combatting infringement and unlawful use. These protection mechanisms assist trademark owners in preventing the unauthorized registration of their marks as second-level domains (e.g., within the new gTLDs. All registry operators are required to hold a Sunrise period and a Trademark Claims period as mandated by their signed Registry Agreement with ICANN. We discussed these mechanisms in an earlier article, but as a quick reminder:

Sunrise — New gTLD registry operators must conduct a Sunrise period of at least 30 days before domains are made available to the public, known as “General Availability.” Sunrise services allow trademark holders an advance opportunity to register domain names that correspond to their marks as a defensive strategy or to leverage a valuable new web address.

Trademark Claims — Following Sunrise, registry operators must hold a Trademark Claims period. During this time, if a potential second-level domain name registrant attempts to use a trademarked term, the registrant will receive notice that it may be infringing on a protected mark. If the potential registrant proceeds, the trademark owner will receive notice and has the opportunity to take action expeditiously.

These two protection mechanisms don’t apply, however, unless protected marks are registered in ICANN’s Trademark Clearinghouse (TMCH). Trademark owners should make it a top priority to register protected marks as soon as possible because new gTLDs are being delegated and launched every day. Experienced registered TMCH agents (including Porter Wright) can advise trademark owners about the registration process.

In an article the TMCH released this week, data indicates that the gTLD program’s protection mechanisms are working. The article reported that more than 500,000 Claims Notices have been delivered, and 95% of the queries for trademark terms are not being followed through to live registration. Though this is good news for mark owners because it indicates that would-be infringers or domain squatters are being deterred, it also illustrates the extent to which proprietary marks are being sought as second level domains by people who don’t own the marks.

Additional protection mechanisms

If brand owners fail to take proactive measures, such as registering in the TMCH, they are limited to reacting to new, potentially infringing domain names after they’ve registered or launched. In those instances, trademark owners can use the Uniform Rapid Suspension (URS) system or Uniform Domain Name Dispute-Resolution Policy (UDRP).

URS — ICANN’s URS procedure is designed to offer a very rapid relief mechanism for trademark holders to combat cybersquatting and other forms of trademark infringement by domain name registrants across all new gTLDs. This procedure, just like the TMCH protection mechanisms, is incorporated into registry’s Registry Agreements. This system offers less expensive and faster responses than the existing UDRP system. The URS is more useful in cases of clear-cut infringement, where there are no disputes of material fact. The remedy in a successful URS complaint will result in the suspension of the challenged name, unlike in UDRP cases in which the complainant gets control of the domain name for the duration of registration.

UDRP — UDRP is a dispute resolution mechanism for trademark owners to resolve clear cases of bad faith, abusive registration and use of domain names. Complainants also can use this process when domain names are confusingly similar to their trademarks or service marks. To prevail, complainants must demonstrate that the domain name registrant has no rights or legitimate interest in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. Infringing domain names are then transferred to successful complainants’ control. This method has proven effective previously, but the costs are much higher and results are less certain compared with the proactive measures incorporated by ICANN through the TMCH Trademark Claims period and the URS procedure.

Advice for brand owners

Brand owners can enjoy many benefits related to the launch of ICANN’s new gTLD program, such as new opportunities for investment, enhanced choice and competition, new business model opportunities, and brand management and online marketing practices. But these benefits are coupled with troublesome, and potentially costly, consequences if brand owners are not informed and prepared for the launch of new gTLDs.

It is imperative for trademark holders to establish and implement processes for monitoring and policing new gTLDs. Investing proactively in registering marks in the TMCH, evaluating current domain name holdings and developing brand protection strategies is likely to be significantly less expensive than enforcing your mark rights after a mark has been registered and used without authorization as a new domain name.

Read Porter Wright’s law alert about gTLDs.