Brand protection is a key issue for retailers. As brands continue to increase their presence online a key aspect is the protection of brands in domain names. 

Until fairly recently, the number of generic top level domains (“gTLDs”) had been restricted to a limited number, including .com, .org and .info. However, a large number of new gTLDs are to be rolled out with names such as .academy, .clothing and .properties having recently been released. 

The ‘Sunrise Period’ (that is, the period prior to public launch when trade mark owners can register domain names, which correspond to their registered marks in the new gTLD) is now open and will be of interest to businesses operating in the world of fashion. 

.fashion launch

The .fashion Sunrise Period opened on 4 February 2015 and will run until 5 April 2015. Shortly after the end of the Sunrise Period, .fashion will then become generally available to the public, who will be able to register .fashion domain names on a ‘first-come, first-served’ basis.

Brand protection mechanisms

Brand owners have been voicing their concerns about the expansion of the gTLD system for some time. With the proliferation of new generic domains, it is difficult and costly for brand owners to successfully protect all of their brands in these new domains. To address brand owners’ concerns, the operators of the internet have put in place various mechanisms which have been designed to provide protection against brand abuse in the new gTLDs, including the use of Sunrise Periods and the Trademark Clearing House (“the Clearing House”). 

The Clearing House has been set up to act as a depository for all trade mark information. It does not provide brand owners with any rights in the new gTLDs. But, if details of registered trade marks are put into the Clearing House, brand owners can then rely on the information during the launch of all the new gTLDs, and will be eligible to pre-register the corresponding domain in the new gTLDs in the Sunrise Periods, prior to the public launch of names. 

In addition, trade mark owners who put details of their registered marks into the Clearing House can also receive notifications about any third party applications to register domain names which are identical to the trade marks entered into the Clearing House in any of the new gTLDs, if evidence of use of the mark (such as a screenshot of a webpage featuring the mark) is also filed at the Clearing House.

Way forward

Whilst it is uncertain whether the new gTLDs will prove popular with internet users, the new domains are already providing fertile ground for cybersquatters. With an estimated 600+ new gTLDs rolling-out over the next two years, blanket protection in all the new domains will not be a viable option for brand owners. Prioritising protection of your brands in the new domains will be vital. 

Clearly, .fashion will be of key interest to businesses which operate in the fashion sector and steps should now be taken to consider protection in this domain; which may include depositing details of their registered trade mark into the Clearing House and then applying to pre-register domain names corresponding to the trade mark as a .fashion domain name during the Sunrise Period.