The protection of brands is a key issue for many businesses, particularly for those brands which are consumer facing.   One aspect of brand protection is the protection of brands in domain names.

Until recently, the number of generic top level domains (“gTLDs”) had been restricted to a limited number, including .com, .org and .info.  However, a large number of new gTLDs are now to be rolled out and the roll-out has already started with names such as .luxury, .clothing and .coffee all having recently been released.

The ‘Sunrise Period’ for .properties has now just opened.  For businesses which operate in the real estate sector, this gTLD may well be of interest.

Brand owners have, however, been voicing their concerns about the expansion of the gTLD system for some time.  With the proliferation of generic domains, it will be difficult and costly for brand owners to successfully protect all of their brands in the new domains.  To address brand owners’ concerns, the operators of the internet have put in place a number of mechanisms in an attempt to provide protection against brand abuse in the new gTLDs.

Brand protection mechanisms

The brand protection mechanisms which have been put in place in the new gTLDs (including for .properties) are:

  1. Trademark Clearing House  A ‘Trademark Clearing House’ has been set up which acts as a depository for all trade mark information.  The Clearing House does not provide brand owners with any rights in the new gTLDs.  However, if details of registered trade marks are put into the Clearing House, brand owners can rely on the information during the launch of all the new gTLDs.   

In addition, trade mark owners who put details of their registered marks into the Clearing House can also receive notifications about any third party applications to register domain names which are identical to the trade marks in any of the new gTLDs if evidence of use of the mark (such as a screenshot of a webpage featuring the mark) is also filed at the Clearing House. 

  1. Sunrise Periods  All the new gTLDs will initially operate a limited launch, a ‘Sunrise Period’.  During the Sunrise Periods, trade mark owners can apply to pre-register domains which correspond to their marks in the new domains, prior to the public launch of the new gTLDs.  However, to take advantage of the Sunrise Periods, details of the brand owners trade mark(s) must first be put into the Clearing House. 

.properties launch

The .properties Sunrise Period has now opened and it is due to remain open until 24 May 2014.  Shortly after the end of the Sunrise Period, .properties will then be launched to the public who will be able to register .properties domain names on a ‘first-come, first-served’ basis.   

Way forward

Whilst it is uncertain whether the new gTLDs will prove popular with internet users, the new domains are already providing fertile ground for cybersquatters.  With an estimated 600+ new gTLDs rolling-out over the next two years, blanket protection in all the new domains will not be a viable option for brand owners.  Prioritising protection of your brands in the new domains will be key.  

Clearly, .properties will be of key interest to businesses which operate in the real estate sector and steps should now be taken to consider protection in this domain by such businesses.