Developments

Developments in relation to domain names are happening rapidly. There are new top-level domains (otherwise known as gTLDs) becoming available all the time and so it is important for businesses to be aware of these developments and take appropriate steps to take advantage of new opportunities while guarding against potential threats to their brands.

New gTLDs

Most will be familiar with the standard gTLDs: such as .com, .org and .net.  But there are now over 250 new gTLDS available with over 1,000 still to come.  The new gTLDs include domains such as: 

.insure

.properties

.construction

.investments

.lease

.limited

.build

.finance

.build

.industries

.town

.management

A full list of available and potential gTLDs can be found here: http://newgtlds.icann.org/en/program-status/delegated-strings

When new gTLDs come online, there is normally a ‘sunrise period’ in which trade mark owners can apply to protect their domain first: for example ‘brookstreet.management’.  This sunrise period precedes the general registration period where anyone can apply for a domain using the new suffix. Of those gTLDs which are already live, some sunrise periods have elapsed, while others are still in play.

New.uk domain

On 10 June 2014 a new .uk domain becomes available. If you already own a .co.uk domain name you will be entitled for a period of 5 years to register your .uk domain. You may also be entitled to if you have a .org.uk, .me.uk, .net.uk, .plc.uk or .ltd.uk domain name, provided that no one else has a ‘better’ domain. So, for example, someone with ‘brand.co.uk’ will have precedence over ‘brand.org.uk’.

If you wish to check your right to register your .uk domain, you can check whether you have the top-ranking right here: http://www.dotuklaunch.co.uk/what-uk

For those whose business has a UK focus, we would recommend securing your .uk registration if possible and at least to be aware as soon as possible if someone else has a better claim to the .uk domain.

Trademark Clearinghouse (TMCH)

The TMCH is a new service to assist with brand protection as the new gTLDs roll out.  It provides a central point for brand owners to register details of their trade marks.  Once verified, the trade marks are then eligible for two types of protection:

  • Sunrise period:  This is a protected period when a new Top gTLD opens, where brand owners can register exact matches of their trade mark. A registration in the TMCH means that you will be eligible to register that mark during the relevant sunrise period of any new gTLD.
  • Trade mark Claims: For a limited period, a brand owner who has registered with the TMCH, is automatically notified when a third party registers an exact match of your trade mark. At the same time, the applicant (domain name registrant) will be formally notified about the brand owner’s rights. This means they cannot claim lack of knowledge of the brand owner’s rights should there be a dispute.

The process of registering in the TMCH is straightforward and inexpensive, and should be considered as part of your domain strategy.

Domain Name Strategy

Domain names issues are becoming increasingly dangerous to ignore. Most businesses have an online presence and your website is one of the main windows into your business. So protecting your brand in the online environment is essential.

We recommend that all businesses have a domain name strategy in place to ensure that opportunities are not missed and challenges to your business acted on efficiently and effectively. The policies do not necessarily need to be complicated, but some simple steps now could save considerable time and cost later. 

A good strategy should consider the following:

  • Ensuring sufficient trade mark protection is in place to protect your brand
  • Ensure your domains are identified and under common ownership and control
  • Ensuring all domains are managed professionally so renewals are not missed and authorised user issues do not arise (e.g. when someone leaves the business)
  • Identifying defensive domain registrations that should be made
  • Registering key brands with the TMCH
  • Setting up a watching service
  • Create a policy regarding if and when to challenge conflicting third party domains
  • Be aware of the range of options for dealing with infringers: registry dispute procedures (such as URS and UDRP), acquisition (through a proxy if necessary) or litigation.