Protecting your domain: The challenges and opportunities of new top-level domain releases

Clinton Priddle

By Clinton Priddle

The Internet is presently undergoing substantial change with the release of thousands of new top-level domains, providing alternatives to the existing top-level domains such as “.com” and “.net”.  This will provide both opportunities and challenges for brand owners, and a Trademark Clearinghouse has been established to help brand owners protect their intellectual property in this regard. Until recently, only a limited number of top level domains needed to be considered with respect to a brand presence online.  In fact, apart from country specific domain names, only 22 generic top level domains (gTLDs) currently exist, including the famous “.com” top level domain.

Paul Thompson - Trade marks online

Contact Paul Thompson for more information about protecting your brand online.

In 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) voted to remove many of the restrictions on gTLDs.  The process of releasing new gTLDs is currently ongoing and 1,745 gTLDs have passed initial evaluation (IE).  A first group of new gTLD applicants have successfully completed Pre-Delegation Testing (PDT) and the first gTLDs are expected to be up and running later this year. The new gTLDs may provide good opportunities to register new corporate domains.  The new gTLDs include categories, such as “.legal”, “.fashion”, and generic domains, such as “.みんな”, which translates as “everyone” from Hiranga Japanese. The new gTLDs also, however, open up new opportunities for cybersquatters to register domains corresponding to a legitimate owner’s trade marks.  In response to this, ICANN has released Rights Protection Mechanism (RPM) requirements for new gTLDs, which were finalised in late September 2013.  The RPM requirements aim to assist trade mark holders in protecting their rights, and such protection is implemented through registration of trade marks in a Trademark Clearinghouse (trademark-clearinghouse.com). By registering a trade mark in the Trademark Clearinghouse, trade mark owners are given access to a sunrise service, where they are given priority in registering their respective trade marks as sub-domains of gTLDs.  Furthermore, trade mark owners are given access to a claims service, where a trade mark owner is notified of any attempts to register a domain corresponding to their trade mark. Although the services of the Trademark Clearinghouse will not be useful for all companies, new gTLDs are on their way, and should be considered as part of most brand protection strategies.