The Internet is changing. Hundreds of new domain name extensions, or generic top-level domains (gTLDs), will soon start appearing online and it is important that brand owners are ready for these changes.
The existing gTLDs (.com, .org, .info etc.) will remain but the organisation that is responsible for managing and overseeing the domain name system, the Internet Corporation for Assigned Names and Numbers (ICANN), has authorised a programme to dramatically increase the number of available gTLDs to a potentially unlimited number that include places (.london), sectors or subjects (.music, .news, .food) or brands (.bmw, .barclays). The programme represents one of the most significant developments in the history of the Internet. Some five years after ICANN announced the launch of the new gTLD programme, the first new gTLDs have been accepted and are expected to go “live” by the end of the year.
Whilst the new domains offer exciting opportunities for brand owners, they also present risks. Opportunists and cybersquatters will inevitably be looking to register new domains in order to promote their own interests. There are, however, mechanisms that brand owners can use to safeguard their rights:
ICANN’s – Trade Mark Clearing House
The Trade Mark Clearing House is a global centralised database of validated trade marks operated by Deloitte and IBM. Entering trade marks into the Clearing House’s database helps secure and defend trade marks across every single new domain name being launched. In addition:
(i) Brand owners have the opportunity to secure new domain names that correspond with registered trade marks ahead of public availability. These “Sunrise Periods” will occur before the launch of every new gTLD.
(ii) Via a trade mark notification service, the Trade Mark Clearing House will notify brand owners when a third party registers a domain name that matches their trade mark.
Uniform Rapid Suspension
Alongside the Trade Mark Clearing House, ICANN is also offering a simplified Dispute Resolution Process called the Uniform Rapid Suspension (URS) system. It is intended to be even quicker and cheaper than ICANN’s Uniform Domain Name Dispute Resolution Policy (such as the system operated by WIPO) to deal with clear cut cases of abuse. At the end of October, Facebook, Inc. brought the first ever successful URS case to recover the domain .facebok.pw.
In addition to the above mechanisms, domain name watching services provide an effective way for brand owners to protect and safeguard their rights.
The Internet is changing and it is important that brand owners acknowledge and understand these changes. Some brand owners will be registering new gTLDs that correspond with their own trade marks to promote and develop the global reach of their brands. Others might want to consider how some of the new descriptive and geographic gTLDs (eg “.London”, “.Wales”) could be used to compliment and strategically develop their own marketing strategies and domain name portfolios by making use of the Sunrise Periods to register new domain names. We recommend however that all brand owners ensure that they have a robust domain name watching service in place to keep abreast of the changes that are taking place.