KEY POINTS ƒƒ

  • New generic domain name extensions such as .clothing and .technology are starting to become available to the general public. ƒƒ
  • We have observed numerous instances of cybersquatting in relation to these new domain names involving prominent brands. ƒƒ
  • Administrative procedures allow trade mark holders to make complaints about infringing domain name registrations. ƒƒ
  • Trade mark holders can also take steps to pre-register domain names corresponding with key brands to prevent them being acquired by third parties.

As we discussed in our alert of April 2013, the Internet Corporation for Assigned Names and Numbers (ICANN) is in the process of introducing new generic-top level domain names (gTLDs). In addition to the existing toplevel domains such as “.com” and “.net”, businesses are now able to register domain names with extensions such as “.clothing” and “.technology”. A few dozen of these new domain names have already launched, with the potential for over a thousand more to appear over the course of the next few years.

Although only a handful of new generic gTLD extensions have launched so far, these appear to have ushered in a new frontier for cybersquatters. We have already observed some rather unusual registrants for domain names corresponding with major brands, including: ƒƒ

  • bensherman.clothing, which is registered to an individual from Wagga Wagga ƒƒ
  • supre.clothing, which is registered to an individual from Point Cook, Victoria
  • ƒƒhuffy.bike, which is registered to an individual from Montana ƒƒ
  • mossimo.clothing, davidjones.clothing, myer. clothing and reece.plumbing which are all registered anonymously ƒƒ
  • beacon.lighting, which was briefly registered to a company by the name of Second Level Domain Investments, before swapping to an anonymous registration and
  • ƒibm.guru and ibm.ventures, which were registered to an individual from New Jersey.

Complaint Mechanisms

Processes are available for trade mark holders to take action in relation to improperly registered domain names.

The Uniform Domain Name Dispute Resolution Policy (UDRP) which applies in relation to other top level domain names also applies in relation to these gTLDs. The UDRP allows trade mark owners to apply for the cancellation, suspension or transfer of domain names registered and used in bad faith.

A new Uniform Rapid Suspension scheme (URS) also applies to new gTLD domain names. This was designed to provide trade mark owners with a cheap and quick procedure to have infringing domain names suspended.

IBM has become one of the first parties to use the URS, and has successfully had the ibm.guru and ibm.ventures domain names suspended.

Pre-registration

As they say, prevention is better than a cure. In this case, trade mark owners are able to take steps to pre-register domain names corresponding with key brands before they become available to the general public.

As set out in our in our previous alert, each gTLD launch will include a Sunrise period, where domain names can only be registered where they correspond exactly with registered trade marks. We have helped a number of our clients successfully pre-register domain names during this period, to prevent them from ever becoming available to third parties.

Brand owners should consider registering key brands in advance to ensure that these domain names cannot be acquired and used by competitors or other third parties. The cost of doing so is likely to be substantially less than fighting a cybersquatter later.

A list of gTLD extensions recently launched or launching soon appears below. 

gTLD extensions

  • .bike
  • .clothing
  • .guru
  • .holdings
  • .plumbing
  • .singles
  • .ventures
  • .camera
  • .equipment
  • .estate
  • .gallery
  • .graphics
  • .lighting
  • .photography
  • .menu
  • .contractors
  • .construction
  • .land
  • .technology
  • .directory
  • .today
  • .kitchen
  • .diamonds
  • .enterprises
  • .tips
  • .voyage
  • .sexy
  • .tattoo
  • .shoes
  • .careers
  • .link
  • .guitars
  • .photos
  • .recipes
  • .limo
  • .domains
  • .cab
  • .company
  • .computer
  • .systems
  • .academy
  • .management
  • .center
  • .builders
  • .email
  • .solutions
  • .support
  • .training
  • .camp
  • .education
  • .glass
  • .institute
  • .repair
  • .coffee
  • .florist
  • .house
  • .international
  • .solar
  • .holiday
  • .marketing
  • .codes
  • .farm
  • .club
  • .buzz
  • .foundation
  • .exposed
  • .villas
  • .flights
  • .rentals
  • .cruises
  • .vacations
  • .kiwi
  • .build
  • .watch
  • .luxury
  • .reviews
  • .futbol
  • .dance
  • .ninja
  • .consulting
  • .social