What is a gTLD?

Generic Top Level Domain names (gTLDs) are a category of Top Level Domains (TLDs) for use in the Domain Name System on the internet. They are visible to internet users as the suffix at the end of a domain name. There are currently 22 gTLDs in use including .com, .net and .org. In June 2011 the Internet Corporation for Assigned Names and Numbers (ICANN) approved the new gTLD program which has allowed companies and organisations to apply to register new gTLDs. Over 1200 new gTLDs could be introduced by 2014. The first new gTLDs are expected to launch in the second quarter of 2013.

What effect will new gTLDs have on brand owners?

The introduction of so many new gTLDs presents a challenge for brand owners and an opportunity for squatters to abuse the trade mark rights of others. Brand owners should review their domain name policy in light of the new gTLDs. To consider how you will protect your brand from the increased risk of cybersquatting it may be necessary to consider defensive registrations and to budget for the potential impact of the new gTLDs.

The Trademark Clearinghouse

The Trademark Clearinghouse opens on 26 March 2013. It is designed to give brand owners the opportunity to protect their brand names as new gTLDs. It allows brand owners to submit any of their trademarks which they might want to register under the new gTLDs for authentication.

The Clearinghouse authenticates the trade mark information and passes this information to the registries and registrars of the new gTLDs. Entering the Clearinghouse gives trade mark owners access to two services:

  • Sunrise Period - You must register your rights with the Clearinghouse to obtain access to the initial phase of applications, the ‘sunrise period’. The sunrise period gives trade mark holders priority in registering their marks under the new gTLDs before general applications are accepted. To use this service you will be required to sign a declaration stating that your trade mark is in use in relation to the registered goods and services, and to provide evidence of use.
  • Trade Mark Claims Service – The claims service is a notification service which will inform the owners of trade marks registered with the Clearinghouse that a third party has applied to register a domain name under a new gTLD that is identical to the trade mark. The service can be used even if you did not opt to register a domain during the sunrise period. Proof of use is not required to use the service. Please note that entry into the Clearinghouse does not prevent third parties from registering your trade marks as domain names, it gives you notification of the application so that you can decide whether to take further action.

Please note you are not required to enter your marks into the Clearinghouse in order to register your mark under the new gTLDs, but if you have not done so you will not be able to register your mark as a domain name during the sunrise period, you will have to wait for the general application stage, which is usually on a first come first served basis.

It is advisable to register your marks with the Trademark Clearinghouse early in preparation for the launch of the new gTLDs. You should consider the list of applied for gTLDs and formulate your strategy: we could provide you with this list upon request. If there are any marks you would like entering into the Clearinghouse you should inform us as soon as possible.