The new gTLD extensions – what does it mean for trademark owners?

Published on: 30 April 2013

A recent change introduced in the generic top-level domain (gTLD) system by the Internet Corporation for Assigned Names and Numbers (ICANN – the governing body that manages Internet protocol numbers and the Domain Name System root worldwide) is bound to significantly impact the way in which the Internet is experienced by worldwide users and trademark owners.

Traditionally, the most common set of gTLDs is the unrestricted gTLDs group, which contains those domains that are available for registration by any individual or organization for any use, such as .com, .net, .info, and .org. Over the years, an increasing number of gTLDs has been made available to the public, currently counting a total number of 22, including general purpose domains as well as restricted gTLDs which are intended only for specific target audiences and are granted based on strict eligibility criteria. For instance, the .aero gTLD is limited to entities with a presence in various air-travel-related fields, while .museum can only be registered by a legitimate museum.

In June 2011, ICANN authorized the launch of a new gTLD Program aiming to promote competition, innovation, and consumer choice by removing a lot of the restrictions concerning the registration of gTLDs. The new program would give organizations more flexibility and choice in registering a personalized domain name, allowing trademark owners to express their brands and trademarks more accurately on the Internet and to better connect to their target audiences.

In practice, applying for a new gTLD is a much more complex process than registering a second-level domain name, which nowadays anyone can easily do. The new program allows an organization to apply for, obtain and use a gTLD to operate a Top-Level Domain registry business of their own choosing by making domain names available for others to register.

The evaluation fee for a gTLD application is US$185,000 and applications can be filed under one of four available types of new gTLD categories[1]:

  • Standard or Generic TLD - under this type of application, the proposed new gTLD is open to the public for registration. The string does not have any restriction. These are mostly generic terms, though some applications for generic terms, most notably by Amazon and Google, propose restricting the use of the TLD to solely corporate purposes
  • Community TLD - the proposed new gTLDs under this application are restricted to a specific community with high degree of social awareness. The application should be strongly supported by the community. Examples of community TLDs include: .catholic, .thai, .aarp
  • Geographical TLD - This type of application represents a particular city or region; support of the local government is required for these TLDs. Examples include: .nyc, .berlin, .tokyo
  • Brand TLD - companies and organizations will be able to apply for their own TLDs using their brand names and trademarks. For example: .unicef, .motorola, .hitachi, .deloitte

The first round of gTLD applications took place between January – April 2012, during which the ICANN has received a total of 1,930 applications. The release of the approved gTLDs is expected to take place during the second half of 2013.

The upcoming launch of the new gTLDs will no doubt provide cybersquatters and others seeking to derive a financial benefit from the release of the new gTLDs, a new means of registering second-level domain names closely connected to certain brands, for example, which might create difficulties for trademark owners in monitoring and protecting their brands in each of the new gTLDs.

As an attempt to prevent this pitfall, ICANN has set up a protection mechanism for registered trademarks – the Trademark Clearinghouse (TMCH), launched on 26th March 2013  -  aiming to support trademark owners in enforcing their rights by submitting their trademark data into one centralized database prior to and during the launch of new gTLDs. The main benefits to listing a trademark on the TMCH register are that (1) it gives the trademark owner a chance to register a domain name corresponding to their trademark under the new gTLDs before the public is free to register those domain names (the so called “Sunrise period”) and (2) ICANN will send warnings to those attempting to register a domain name that corresponds to a trademark name in TMCH via a trademark claims service. In addition, if that person continues with the domain name registration after receiving the warning, ICANN will notify the trademark owners holding the corresponding mark, so they can take appropriate actions if needed.

The period left until the launch of the new gTLDs should allow every trademark owner the time to consider a few questions that would help formulate a practical strategy for mitigating risks or benefiting from potential opportunities triggered by the new program: How might the launch of the new gTLDs impact my trademark? Should I aim to register my trademark under a new gTLD? Should I defensively register second-level domain names in any of the new gTLDs to avoid potential infringements? Does it make sense to employ the Trademark Clearinghouse or the trademark claims service? What else can I do to ensure protection of my brand?

The list of new gTLD applications is available on the ICANN site dedicated to the gTLD Program.

Our law firm Dennemeyer & Associates will support clients in registering their trademarks with the Trademark Clearinghouse. We will be pleased to provide further information hereto in a special edition of our newsletter.