The New gTLDs Are Almost Here

On August 23, 2013, the Internet Corporation for Assigned Names and Numbers (ICANN) released updated statistics on the progression of new generic Top-Level-Domain (or “gTLD”) applications. Although the exact number of gTLDs that will ultimately proceed to launch remains unknown, it is clear that the addition of new gTLD strings will soon be a reality. Trademark owners are now finding themselves looking for ways to protect their marks from being registered as domain names in the new gTLD space without their knowledge or consent. This update provides an overview of the most recent developments in the progression of gTLD applications, as well as key steps that brand owners can take to protect their marks in view of the rapidly changing gTLD landscape.

To date, a total of 266 gTLD applicants have completed the evaluation and objection phases, and have been invited to sign registry contracts with ICANN. Of those, 58 applicants have responded to their contracting invitations, and registry contracts have been signed for each of the four following non-English gTLDs:

• .онлайн (English: “.online”)
• .сайт (English: “.website”)
• .شبكة (English: “.network”)
• .游戏 (English: “.game”)

With signed registry agreements now in place for these first new gTLDs, the next step is “Pre-Delegation Testing.” The Pre-Delegation Testing phase lasts approximately two months and is meant to ensure that an applicant has the capacity to operate a new gTLD in a stable and secure manner. Given these recent events, the current best estimate is that launch of the first of the new gTLDs is expected sometime in the fourth quarter of 2013.

What Do These Events Mean for Brand Owners?

The last several months have seen much discussion over the potential for trademark infringement by third parties seeking to register new domain names that incorporate the brands of others.

In view of the potential for infringement, ICANN has established certain rights-protection mechanisms within the new gTLD program in order to protect the rights of brand owners. One of those provisions is the Trademark Clearinghouse (TMCH), an entity created by ICANN with which trademark owners can register their marks in advance of the new gTLD launches.

Brand owners who register their trademarks with the TMCH can take advantage of a dedicated priority or “sunrise” period during which they would be entitled to register domain names identically matching their marks before registration opens to the general public. In addition, the TMCH will provide the brand owner with automatic notification of any third-party attempts to register domain names that are an identical match to their marks, enabling the mark owner to then take appropriate legal action. These mechanisms would give brand owners a key advantage over potential cybersquatters intending to register infringing domains under the new gTLDs.

Registration of a trademark with the TMCH is available for registered trademarks, marks protected by statute or treaty, or court-validated marks. Registration is also available for any other marks that constitute intellectual property rights in accordance with the new gTLD registry’s policies and that meet the eligibility requirements of the TMCH. Registration costs are $150 per mark for a one-year term of registration, $435 for a three-year term, and $725 for a five-year term. Registration with the TMCH does not include fees that will be charged by the new gTLD registries or registrars to register domain names during the “sunrise” or general-public registration periods.

Brand owners are strongly advised to consider registration of their marks with the TMCH as an additional tool to combat infringement of their brands in cyberspace.