New domain name spaces are in the process of being introduced. Businesses and brand owners should take care to make sure that their trade marks are not registered as domain names in these new spaces by unscrupulous operators or by competitors. There are protection mechanisms for brand owners that can be used to assist in blocking others from registering your trade mark as a domain name.

Background

The new domain name spaces are called generic top-level domains (gTLDs). Examples include .book, .sydney and .rip. For example, one may soon be able to register and use new domain names, and have website addresses such as www.crime.book or www.table.tennis, or have an email address such as [email protected]

We previously wrote about the introduction of the new gTLD program here, here and here.

First sunrise periods open

A “sunrise” period gives brand owners the opportunity to register domain names corresponding to their trade marks in a new gTLD space before the public is able to do so.

The first sunrise period has just opened.

Donuts Inc is a registry operator that applied for the most gTLDs -- more than 307 including .business, .email, .diet, .flowers, and .lawyer. Donuts is the first gTLD Registry to announce a tentative Sunrise Period starting 29 October 2013 for nine of its gTLDs, namely:

  • .camera
  • .clothing
  • .lighting
  • .singles
  • .ventures
  • .voyage
  • .guru
  • .holdings; and
  • .equipment.

This means that during the 60 day “sunrise” registration period, rights holders who have recorded their trade marks with the Trademark Clearinghouse (Clearinghouse), prior to or during the launch of a new gTLD, are eligible to register domain names.

If your trade mark is registered with the Clearinghouse, you could apply to register [yourbrand].camera or [yourbrand].clothing, whether defensively, or with the intention of using the domain as a website address or for emails. After the sunrise registration period, the “Landrush” period will start, where domains will be available to the public on a “first in, best dressed” basis.

Donuts Inc. also offers a “Domain Protected Marks List” (DPML), a “block” service, which gives trade mark owners the ability to defensively block their marks (or their mark plus a keyword) for a five- or ten-year period across the company’s whole portfolio of gTLDs. This means that you could apply to Donuts to block [yourbrand].anyDonutsgTLD and/or [termincludingyourbrand].anyDonutsgTLD. For example, Sony could apply to block sony.camera, sony.audio and sony.store or sonyyy.camera, mysony.audio, or sonysucks.store. While pricing is at the discretion of each registrar, it appears that this service could offer a cost-effective alternative defensive strategy. Again, this protection is only available if you have registered your trade mark with the Clearinghouse.

I’m a brand owner, what should I do?

If you haven’t already, you should consider whether you want to register your key trade marks in the Clearinghouse. Registering your trade marks in the Clearinghouse will allow you to:

  • access “sunrise” registration periods;
  • be notified of any domain name registration requests which match your trade mark, for a minimum of 90 days after general registration opens; and
  • access any specific “blocking” services made available by the operator of various gTLDs.

This chart prepared by Key-Systems suggests that many more gTLDs are likely to be launched during the remainder of 2013 and the first half of 2014. While there is no time limit for submission of trade marks to the Clearinghouse, in order to access sunrise registration periods, the trade mark is best submitted prior to the launch of the relevant gTLD. Given that registration at the Clearinghouse may take up to 20 days from filing, your Clearinghouse strategy should be decided sooner, rather than later. For more information about whether the Clearinghouse is the right strategy for you, see here.

First new gTLDs delegated

On a related topic, on 23 October 2013, ICANN delegated the first four of its new gTLDs by introducing them into the Internet’s Root Zone (the central authoritative database for the Internet’s Domain Name System (DNS)). This is the beginning of the largest expansion to the DNS since its inception, which will see the Internet grow from the 22 current gTLDs (including .com, .net, .biz and .org) to more than 1400 new names or “strings”.

ICANN prioritized the processing of non-Latin strings, and the first four gTLDs to be delegated are in Arabic, Cyrillic and Chinese scripts as follows:

Click here to view table.

It has not yet been announced when the sunrise period for these gTLDs will open.