Until recently, only a limited number of generic top-level domains (gTLDs) have been available, among them .com, .biz and .info, but in recent months the gTLD universe has vastly expanded.
Over the past year, ICANN has approved more than 400 new top-level domain names – among them, .RESTAURANT and .PIZZA – for registration. Instead of ending its web address with a brand or company name followed by .COM, an organization can select a gTLD that reflects the nature of its business. ICANN says this benefits businesses by allowing for more unique web addresses. However, the array of new gLTDs also exposes companies to an increasing number of bad-faith cybersquatters.
New on the market – .RESTAURANT and .PIZZA – sunrise periods expire soon
Among the new gTLDs recently approved by ICANN are .RESTAURANT and .PIZZA, and these domains will soon become live.
For trademarks that are recorded in the Trademark Clearinghouse (which is explained below), there is a special sunrise period that expires November 1, 2014 for trademark owners to register .RESTAURANT domain names and until November 29, 2014 to register names using .PIZZA. During this sunrise period, trademark owners registered with the Trademark Clearinghouse have the exclusive opportunity to register their marks with these respective gTLDs, such as YourMark.restaurant. You may register these domain names for one to ten years at a cost of less than $700 each for 10 years. Most domain name vendors can handle these registrations.
The Trademark Clearinghouse
The Trademark Clearinghouse is intended to serve as one of the key protection mechanisms for brand owners. Its purpose is to protect brand owners from third parties who attempt to include the brand owner’s trademark in a new gTLD. Recording a registered trademark with the Clearinghouse costs about $250 per year. Brand owners that sign up for this service receive the benefit of two protective programs: the Trademark Claims Service and the Sunrise Service, both of which are described below.
- The Trademark Claims Service notifies brand owners of possible infringements. If someone attempts to register a domain name that incorporates your recorded mark, you will receive a warning notice so you can take action against them. Unfortunately, a new gTLD registry must perform this function for only 90 days after it launches.
- The Sunrise Service is a program under which brand owners are granted a “sunrise” period of at least 30 days to register a domain name with your mark before the general public has an opportunity to do so. This gives trademark owners an early-bird period to register their marks with a new gTLD, such as YourMark.restaurant. Once the sunrise period closes, the general public can register brand names under the new gTLD.
Should you register?
Based on our experience with other new domains that have launched, a third party is likely to register a .RESTAURANT or .PIZZA domain name for just about any fairly well-known brand if the restaurant does not pre-emptively register it during the sunrise period.
If this happens, the owner of a registered trademark could still take action against such a cybersquatter by filing an action under ICANN’s Uniform Dispute Resolution Policy, but that can get expensive.
.RESTAURANT and .PIZZA, of course, are not the only gTLDs of concern. Although these newest gTLDs are food-related, every business would seem to have one or two terms that may be relevant to them as gTLDs, such as .hotel or .realty.
In this expanding universe, vigilance is essential to protect your brand.