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New gTLDs launched: an opportunity (and threat) for brand owners

.com written on a screen Print publication

20/12/2013

Generic Top Level Domains

Generic Top Level Domains (gTLDs) appear to the right of the dot in a domain name. Historically, there were only a limited number available, with ‘.com’ being the most common. In 2011, the Internet Corporation for Names and Numbers (ICANN), which is charged with responsibility for developing the gTLD domain name system, relaxed the system so that it became possible to incorporate brand names within a domain name, such as, for instance, ‘.walkermorris’. Further deregulation has followed. In particular, seven new gTLDs were launched on 26 November, a further seven on 3 December and a further seven on 10 December.

The gTLDSs launched on 26 November were:

.BIKE
.CLOTHING
.GURU
.HOLDINGS
.PLUMBING
.SINGLES
.VENTURES

The gTLDs launched on 3 December were:

.CAMERA
.EQUIPMENT
.ESTATE
.GALLERY
.GRAPHICS
.LIGHTING
.PHOTOGRAPHY

The gTLDs launched on 10 December were:

.CONTRACTORS
.CONSTRUCTION
.DIRECTORY
.KITCHEN
.LAND
.TODAY
.TECHNOLOGY

The launch of the new gTLDs heralds what is likely to be a very substantial expansion of available gTLDs over the next two years. This poses both an opportunity and a threat for brand owners. The opportunity exists in linking a brand name to a sector; so that, for instance, clothing suppliers can link their name to ‘.CLOTHING’ or a plumbing business can link its name to ‘.PLUMBING’.

However, the proliferation of gTLDs also markedly increases the possibility of trade mark infringement. Trade mark owners should, if they have not already done so, register their trademarks with the Trademark Clearinghouse.

The Trademark Clearinghouse

We have written previously about the new Trademark Clearinghouse, a single, centralised database of authenticated registered trade marks which was established to assuage fears of trade mark owners that their marks could be infringed by the expansion of gTLDs. The Trademark Clearinghouse requires all gTLD registrars to check new registrations against the Clearinghouse so that, where a proprietor has registered their mark with the Clearinghouse, this should prevent a registration which infringes that mark. The existence of the Clearinghouse means that trade mark holders do not need to protect their mark by registering in multiple databases every time a new gTLD is launched.

As further protection for brand owners, the registry that operates the new gTLDs – Donuts – is providing a service whereby, once a mark has been recorded at the Trademark Clearinghouse, the brand owner will be able to apply to put its mark on the registry’s ‘Domains Protected Marks list’ so that any subsequent application to register a domain which is identical to, or which contains the registered trade mark, will be refused.

There is also a ‘Sunrise’ period so that trade mark proprietors who have registered their marks at the Trademark Clearinghouse can ‘pre-register’ with the new gTLDs before these become publicly available. The Sunrise period for the gTLDs launched on 26 November ends on 24 January 2014. The Sunrise period for the gTLDs launched on 3 December ends on 31 January 2014 and that for the gTLDs launched on 10 December ends on 7 February 2014. These are small windows so any brand owner looking to take advantage of the Sunrise period for the recently launched gTLDs must act quickly.

What should brand owners be doing

More generally, with the proliferation of gTLDs, brand owners need to do the following to protect their marks:

  • register their marks at the Trademark Clearinghouse
  • conduct an audit of their portfolio of marks to assess which are most critical to the business and require protection through registration with a new gTLD
  • keep under review the rolling out of new gTLDs and be in a position to react quickly when a new gTLD that could have a business impact becomes available.

The Walker Morris Trade Marks and Designs Unit has a wealth of experience in registering new domains and recording marks with the Trademark Clearinghouse. We would be delighted to assist you in protecting your marks in what is becoming a new, less regulated landscape.