The coming months are set to see the biggest ever shake-up of the internet domain name landscape.  ICANN, the international body responsible for managing the domain system, is currently examining over a thousand applications for new generic domain suffixes (so-called 'New gTLDs'), such as '.app', '.music', '.shop' and '.swiss', to name a few. 

A large proportion of these New gTLDs, once approved, will be open to anyone wishing to register domain names ending in the suffixes in question.  This threatens the dominance of the '.com' suffix and other popular suffixes (e.g. '.org' and '.biz).  It also presents a number of new challenges and opportunities for brand owners.

The so-called 'Trademark Clearinghouse'

In response to concerns over the increased risk of cybersquatting following the introduction of these New gTLDs, ICANN has created a 'Trademark Clearinghouse' allowing the relatively inexpensive recordal of proprietary trade mark rights within a central repository. 

The Trademark Clearinghouse is by no means a reliable substitute for proper domain name monitoring services.  However, it is designed to provide the following benefits to trade mark owners:

  1. 'Sunrise' applicationsAs and when each New gTLD is launched, owners of trade marks that have been pre-recorded in the Trademark Clearinghouse will be eligible to apply for registration of domains corresponding with these marks before the application procedure is opened up to the general public.  This will not apply to New gTLDs that are to be exclusive to specific organisations or other 'closed' groups.
  2. Conflict warningAny third parties applying to register a New gTLD domain corresponding exactly with a trade mark that has already been recorded in the Trademark Clearinghouse will (subject to certain conditions) receive notification of the rights asserted in the mark in question, formally putting them on notice of these rights.
  3. Claims notificationUpon registration of a New gTLD domain corresponding exactly with a trade mark recorded in the Trademark Clearinghouse, the owner of said mark will (subject to certain conditions) be notified in case they wish to contest the registration.

What should brand owners do?

Given the vast number of New gTLDs expected, it is important for all brand owners to start preparing now, particularly those with any interest in registering New gTLD domains themselves.  Indeed, for these owners, recordal in the Trademark Clearinghouse should be regarded as a commercial imperative, with advice immediately sought on the specific recordal requirements and other practical / strategic considerations.

The Trademark Clearinghouse may be of some (albeit limited) value to other brand owners in, for example, deterring would-be cybersquatters. 

However, those brand owners thinking of using the Trademark Clearinghouse solely for monitoring and challenging third-party domain name applications should instead consider subscribing to commercial monitoring services.  This may well prove a more economical option, and such monitoring services are also likely to prove far more effective in detecting domain names of concern, including:

  • domains which consist of deliberate misspellings of a given trade mark;
  • domains in which a given trade mark is combined with other terms;
  • domains which consist of / contain trade marks which are not eligible for recordal in the Clearinghouse (e.g. because they are pending registration); and
  • domains with suffixes other than those available under the New gTLD system (e.g. '.com' and country-specific suffixes).

Given the huge potential risks associated with the changing domain name system, the use of domain monitoring services is therefore likely to become increasingly important and valuable to all trade mark owners with an interest in protecting their brands online.

Further information and assistance

A full list of New gTLDs currently under examination can be found on ICANN's website at: https://gtldresult.icann.org/application-result/applicationstatus.