It is essential for brand owners to develop and implement brand and trademark protection strategies, to prepare for the upcoming expansion of Internet domain names. ICANN, the organization that controls the Internet domain name system, recently announced that the first names in its new generic top-level domain (gTLD) program could begin activation as early as November 2013.

An Explosion of New gTLDS

The Internet currently operates with 22 gTLDs (a gTLD is the portion of the domain to the right of the "dot," such as .com, .net, and .org). Under the ICANN expansion, there may be as many as 1,400 new gTLDs, which may include terms like .beer, .diet, .movie, and .shoes.

Even with only 22 gTLDs, the Internet has become a playground for fraud and crime of all kinds, including Internet trademark abuse. The expansion from 22 gTLDs to 1,400 gTLDs will make Internet brand and trademark protection much more difficult.

The Trademark Clearinghouse

In response to vigorous objections lodged by brand owners, law enforcement agencies, and other key groups, ICANN has initiated what it calls the Trademark Clearinghouse (TMCH), which it is positioning as a tool for brand owners to protect their brands and trademarks. But, the TMCH will not actually prevent brand and trademark abuse. Instead, it merely allows trademark owners who have recorded their registered trademarks with TMCH to take advantage of two programs that will provide some limited advantages.

One of those programs will allow TMCH participants to register new gTLD domain names during a "sunrise" period before the general public has the opportunity to register those domains. The other program provides TMCH participants with "claims notices" if someone tries to register a new gTLD domain name that includes the TMCH participant's trademark.

If a brand owner wants to participate in the sunrise and claims notice programs, it must have recorded its trademarks with TMCH well before a new gTLD begins offering domains for registration, so it is important for that brand owner to record its registered trademarks with TMCH as soon as possible.

Strategic Issues Are Critical

But, there is a larger, more basic issue -- brand owners should determine which strategies to pursue in this new 1,400 gTLD world. For example, many brand owners currently use a defensive strategy of registering their domains across many, if not most, of the current 22 gTLDs. In addition, they often register not only the actual trademark name itself, but also words that are similar to it or that are common misspellings of it. Some large companies may own several thousand domain name registrations as part of defensive strategies. In a 1,400 gTLD world, some brand owners may decide to abandon a defensive strategy and, instead, address Internet brand and trademark abuse as it arises. Such a strategy would require an analysis of appropriate tactics that could include intelligence gathering, enforcement actions, and other tools.

Recommendation for Action

We recommend that brand owners take steps now to address the issues that will accompany this Internet gTLD domain expansion. These steps include:

  • Determine the overall strategy for Internet trademark protection. Will it include a defensive strategy, or will it instead merely focus on taking action when trademark abuse occurs?
  • Identify trademarks to submit to Trademark Clearinghouse, based on consideration of the overall strategy, and record those trademarks with TMCH soon so that the sunrise and claims notice programs will be available as the new gTLDs roll out.
  • Review the list of all the potential new gTLDs and determine if any are of particular interest, based on the nature of the name and individual brand situations. Identify potential new gTLDs to closely monitor, so action can be taken when they are made available for registration.
  • Identify and implement intelligence gathering tactics. One limitation of the TMCH claims notice program is that it is only in effect during the first 90 days that a new gTLD is available for registration, so a brand may wish to subscribe to a monitoring service that provides ongoing monitoring of domain registrations and broader intelligence gathering.
  • Consider the advantages and disadvantages of enforcement alternatives. For example, sometimes a court action may be more appropriate, while other times a Uniform Domain Name Dispute Resolution Policy (UDRP) action would be better suited for the circumstances.
  • Review current domain registrations, and make adjustments to align with the new overall strategy. If the new strategy abandons a previous defensive strategy, it may be appropriate to drop many domain registrations.
  • Adopt or revise procedures for managing domain registrations. It may be more important, now more than ever, to consolidate the management of domain registrations with a single registrar.
  • Adopt or revise procedures for taking enforcement actions. By having the procedures in place now, it will be much easier to act swiftly when trademark abuse occurs and must be addressed.
  • Meet with internal technology department groups to consider if there are any technological consequences that could result from implementation of the new gTLDs.
  • Consider the overall impact on brand budgets, and account for it.

The expansion of gTLD domains will make Internet brand and trademark protection much more challenging. But, by taking these steps in anticipation of this gTLD expansion, brand owners can be better prepared for those challenges.