A massive expansion of the Internet domain space is underway: The familiar .com is being joined by an army of new “gTLDs” (generic top-level domains), likely over 900, spanning every industry (e.g., .technology, .plumbing), profession (e.g., .lawyer, .florist), and more (e.g., .sucks, .wtf). As this new system lurches into being, best practices are anyone’s guess. Evolving checks and balances, including rights protection mechanisms, do little to protect brand owners in this uncharted territory.
Take the Trademark Clearinghouse (TMCH), the first stop for brand owners looking to curb third-party exploitation of their marks in the new gTLD space. Depositing marks in the TMCH confers two benefits: (1) the chance to register those marks as second-level domains (SLDs) in the new gTLDs (e.g., yourmark.business) before the general public in “sunrise periods”; and (2) notice when someone tries to register a SLD that is identical to a mark (the “claims service”).
At least post-sunrise, the TMCH has serious disadvantages. Most significantly, the claims service does not prevent others from registering a mark as their SLD. Rather, brand owners and domain applicants merely receive notice that an attempted registration may infringe a mark. But nothing short of litigation stops the applicant from completing that registration and using the domain. Additionally, brand owners only receive notice for identical marks, not misspellings, typos, or words containing the entire identical mark (e.g., yourmark.business but not yorumark.business). Some enterprising registries offer a blocking service — for a fee — that prevents brand owners’ marks from being registered as SLDs across all gTLDS that the entity owns. Donuts Inc. offers that service, known as its Domains Protected Marks List, across the 200-plus gTLDS it is likely to operate for $2,500 to $3,000 for five years. While this may be more cost effective than counting on hundreds of individual registrations, downsides remain. Terms containing the identical mark will be blocked, but not misspellings or typos. Also, another brand owner with rights in the same mark can trump a block (e.g., Delta Air Lines can override Delta Faucets’ block if the former has a valid registration in the TMCH). And, of course, there will be hundreds of gTLDs to which blocking does not apply.
Another form of protection is the Uniform Rapid Suspension (URS) System, touted as a cheaper and faster Uniform Dispute Resolution Policy (UDRP) — $300 to $500 for a URS versus $1,500 to $2,000 for a UDRP. But, like the previous rights protection mechanisms mentioned, the URS may be a hollow remedy: Even if the trademark owner wins, the domain is not transferred to the owner as it would be in a UDRP. Instead, the domain is rereleased into the general pool of available domains, for the owner or someone else to pick up.
The safest approach may be to record core marks in the TMCH, participate in the relevant sunrise periods, and police actual infringements. Just as registering marks in various countries is like buying insurance that a business will be able to enforce rights, participating in the sunrise periods is another kind of insurance — insurance that a business controls the use of its exact mark as an SLD. As mentioned, this is a form of limited control, however — registering yourmark.app will not cover yourmarks.app, yorumark.app, or any other permutations. As has always been true in the domain space, it is not realistic to be able to control every conceivably related domain across all new gTLDs.