The new gTLDs: Practical tips for businesses and brands

Wayne Beynon
September 10, 2013

In the second part of my series on the new gTLDs (read the first instalment here), we discuss the potential for trademark infringement that this new era of domain names has ushered in, and what companies and brands can do about it.

While the new gTLDs provide new and exciting opportunities for brands to promote themselves and their products, they also present an exponentially increased number of possible opportunities for internet evils including domain name squatting, typo squatting, or trademark infringement.

With this in mind it is vital that trademark owners should be aware of the steps that can be taken against internet squatters who actively aim to profit from the wrongful registration of domain names that ultimately results in consumer confusion and a lack of brand control. Brand protection is key here.

Of course, bigger brands will be able to employ the services of a team of lawyers, well versed in intellectual property and internet law to take care of proceedings when it comes to applying and registering for the new gTLDs. However, for those companies who have been utterly blindsided by the new gTLDs and can’t afford to consult an expert (and there will be millions of these), ICANN, the entity responsible for the new domain name system and its roll out, has set up the Trademark Clearinghouse.

The Trademark Clearinghouse offers a step-by-step guide about what to do next, should you wish to take advantage of the opportunities offered by the new breed of gTLDs, or to protect a registered trademark.

The Trademark Clearinghouse is intended to create a central database of trademark data in which brand owners can register their company details in order to secure certain benefits with respect to the new gTLDs when it comes to allocation, in order to avoid the potential dangers of cyber squatting.

The Clearinghouse protects brands in two ways: with a Sunrise Service and a Trademark Claims Service. Sunrise is an initial period of at least 30 days before domain names are offered to the general public. Trademark owners can take advantage of the Sunrise to safeguard the domain name that matches their trademark. A Sunrise Period is mandatory for all new gTLDs and having a validated trademark entry in the Clearinghouse is the minimum requirement to participate in the limited pre-registration period.

The Trademark Claims service follows the Sunrise. It is a notification service –mandated by ICANN for all new gTLDs – to warn both domain name registrants as well as trademark holders of possible infringements.

Trademark holders have ample time to register their IP rights online, or by speaking to an agent. After verification, these rights are centrally stored and can be used to register the corresponding domain name in any new gTLD, before general registrations open. The hope is that this process shall greatly reduce the administrative burden and associated costs for trademark holders.

Of course, in some instances disputes will arise that cannot be easily resolved by the inbuilt safeguards in the Trademark Clearinghouse system and in these instance brands may be wise to seek specialist legal advice from an IP lawyer.

Wayne Beynon is an IP and media lawyer at Cardiff and London based law firm, Capital Law www.capitallaw.co.uk.