The New gTLDs: Trademark Issues in the Ever Evolving Online Landscape

In January 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) opened the application period for new generic top-level domains (gTLDs). Despite the $185,000 cost to submit an application for a new gTLD, ICANN received 1,930 applications.

A top-level domain (TLD) is the portion of a domain name that typically comes last. For instance, in the domain www.BRAND.com, .com is the gTLD, sometimes referred to as the first level domain. The portion that comes before the TLD is referred to as the second-level domain. In the example above, “BRAND” is the second-level domain. If the domain was written www.BRAND.icann.org, “BRAND” would be the third-level domain and “icann” would be the second-level domain.

Although just over three years have passed since the announcement was made to open the Internet to new gTLDs, the landscape surrounding its impact on intellectual property protection, primarily involving trademarks, remains murky. Many brand owners are unsure of the protective measures available for their trademarks, and some are uncertain about whether the economic benefits associated with pursuing new gTLDs will offset the costs.

Before the recent expansion, there were 22 TLDs in existence, including the common .com, .net, .edu, and .org. The stated purpose behind “opening” the Internet to new gTLDs was to free the overcrowded gTLDs, such as .com and .net, allowing for increased opportunities for expression in domain names. The argument goes that with such few gTLDs available, the second-level domain space was becoming overcrowded and consumers entering the domain marketplace were left with sparse options for domain names. Yet, there remains some skepticism about the true motive for the decision, given that organizations such as ICANN stand to gain considerable economic benefit.

Despite the controversy, the program has been immensely popular. In 2014, new gTLD registrations totaled 1.5 million, or 0.5% of global TLD registrations. Reports also predict that by December 2015, gTLD registrations could surpass the 10 million mark. Leading the new gTLDs in domain name creation is .guru with more than 79,000 domains registered under this gTLD thus far. Companies seeking to become registry operators, such as Donuts, have already received significant economic backing and stand poised to profit greatly.

The popularity of the program proves that brand owners cannot afford to ignore it. As the Internet continues to expand, brand owners must formulate a strategy to protect their valuable rights. This article discusses some of the protective mechanisms established for that goal as well as some of the cases that have been brought under them. It also discusses the new United States Patent and Trademark Office (PTO) regulations regarding the registration of gTLDs.