The brave new world of Generic Top Level Domains (gTLDs) has arrived. Until September 2013, would be registrants had only 22 gTLDs to choose from, the premium of which was always .com.
Since then, over one hundred have been open for registration, and over the next months and years there will be in the region of another 1,700. This is a game changer both for brand owners and agencies. It presents new opportunities for more targeted communication of information, products and services, but also a potentially serious headache for policing the use of their marks in hundreds of new gTLDs.
The opportunity
For many years it has been next to impossible to register a domain of choice in the primary domain space (especially .com). One of the aims of the introduction of new domains is to open up the web to allow new and more accessible ways of providing information, products and services. Astute brand owners will take advantage of these opportunities and of the keyword association for SEO purposes. Consider, for example, the claims by the applicants for the following domain registries:
• .agency – for any business that identifies itself as an agency.
• .buzz – for communication of fresh news, new product developments, a "buzz".
• .london – for any organisation (or individual) looking to associate themselves with London.
A full list of the registries now open, and those coming soon, is below. A complete list of pending new gTLD applications is available here.
Rights protection
A market upheaval like this inevitably creates risks for brand owners. Dealing with those risks is a combination of preventative measures and enforcement measures.
New procedures are built into the new gTLD process. These sit alongside the existing processes, in particular the World Intellectual Property Association's Uniform Dispute Resolution Policy (UDRP), and traditional IP remedies for trademark infringement and passing off.
Preventative measures
A 'defensive' registration strategy (registering core brands in the key new domains) can be an effective means of preventing unlawful activity. Rights Protection Mechanisms (RPMs) are built into the process to assist rights owners in registering their own brand names.
The Trade Mark Clearing House (TMCH) is a centralised database of trademark owners whose rights have been validated.
Official filing fees are $145 per mark. This was initially an annual fee, but it is now a one-off fee for indefinite registration.
Other RPMs
Some registry operators have created their own RPMs, in particular Donuts Inc., which has applied for about 300 domains. The Donuts 'Protected Marks List' offers rights owners the opportunity to block their marks and/or names including their marks, in all the Donuts gTLDs for a single fee of $2,995 per mark.
Sunrise applications
All registries are required to adopt a 'Sunrise' period (usually for three months) post launch of a new domain, where rights holders have registration priority over anyone else. Rights holders with marks cleared through the TMCH will automatically be accepted for Sunrise applications. Others will have to prove their rights to each registry they apply to.
Rights enforcement
Post-launch, rights owners looking to enforce their rights against third parties registering competing domains will have a choice between using the existing procedure, and using a new Uniform Rapid Suspension process.
What now?
If you have not already done so, you should be considering your strategy to deal with this new world. Ad hoc registrations in 1,700 new domains could result in you wasting time and resources registering names in unwanted registries, and missing out on those that are core to the business.
An ad hoc enforcement strategy will also result in wasted costs and misdirected resources, whilst not necessarily protecting what is important. Other than for those with unlimited resources it will not be practical to prevent all unauthorised uses across hundreds of new domain registries. Rights owners will need to target and prioritise what really matters: the key brands and the key gTLDs, and be prepared for those priorities and strategies to change over time as this new world emerges into the light.
Consider: 1. Devising a registration strategy, perhaps in tandem with an expert who knows what is coming online when and can help you prioritise your requirements.
2. Registering in the TMCH to give you priority in Sunrise, alert you to potentially problematic registrations, and create a presumption of rights in URS.
3. Registering in Donuts Protected Marks List and other bespoke RPMs.
4. Signing up to monitoring service to alert you to registrations that impact on your brand.
5. Devising an enforcement strategy – develop some criteria for enforcement action: think about what are your core brands, what domains would you be concerned to see your brand being used in without your consent.
6. Preparing for URS/UDRP and other enforcement action now by collating the relevant evidence of rights so you are ready to move quickly if a core mark is infringed.
This is a fundamental change in the online world, and it is important to understand the implications of the changes so that you can take advantage of the opportunities, and are aware of the options if you need to enforce your rights.
If you are interested in learning more, please get in touch with Dominic Bray at dbray@forbesanderson.com.
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