gTLD Expansion and Trademark/Brand Concerns
The Internet’s naming system has recently undergone a game changing expansion. The Internet Corporation for Assigned Names and Numbers (“ICANN”) has enabled a large number of generic top-level domains (“gTLDs”) to be added to the existing domain name system under a global initiative called the “New gTLD Program.” These new gTLDs will be in addition to those with which we are all familiar (.com, .net, .org, and .gov). Through this expansion, ICANN has made it possible for corporations, organizations and government entities to obtain their own gTLDs. The following are examples of gTLDs that were applied for:
Geographic: .boston, .london, .nyc
Corporate brands: .aaa, .marriott, .nike
Industry or trade: .accountant, .dealer, .bank
Popular: .phone, .web, .movie
Causes/Religions: .charity, .gives, .kosher
Connections: .sucks, .like, .fail
It is anticipated that both website access and email traffic will greatly expand through the use of many new domain names that will be registered in these new TLDs. This Internet expansion will likely increase the opportunities for commerce, but will also present significant challenges regarding brand protection.
Background of gTLD
Before discussing the application process and issues that may arise with the expansion of gTLDs, it is helpful to understand the background of gTLDs and the basis for their expansion. A gTLD is everything to the right of the dot in an Internet address. These gTLDs are easily recognizable in an Internet address. For example, in the address www.myexample.com, the “.com” is the gTLD. The variety in new gTLDs will be vast. The purpose of a gTLD is to inform a user of the location of the information displayed on a website. In practical terms this means all “.com” addresses are operated and maintained by a single entity, so a user knows that a “.com” address is located within one entity’s infrastructure.
Because a single entity maintains a gTLD, each gTLD has one exclusive registry associated with it. The purpose of a single, exclusive registry is to ensure that duplicate names under the same gTLD do not arise. The registry entity also runs the day-to-day operations of the gTLD, including the infrastructure that supports the gTLD. In effect, the operator of a gTLD runs a piece of visible Internet infrastructure.
ICANN has stated that the purpose of expanding gTLDs is to promote competition in the Internet-address marketplace. But with this competition comes concerns about whether to register in any of the new gTLDs and how to protect a trademark and brand within new gTLDS.
Registering with a New gTLD
The first question to evaluate from a business standpoint is whether registering under a new gTLD is appropriate or advantageous. For example, if a company owns a pizza restaurant it may wish to register a new domain name, such as “company-name.pizza” with the “.pizza” gTLD. While the cost of domain name registration will be set by each gTLD registry, the typical dollar range for registering a domain name is between $20-$100.
Trademark and Brand Protection Concerns
With new gTLDs coming online, protecting a trademark and brand in the expanding gTLD world is a major concern. These issues may arise if an applicant attempts to register a domain name that encompasses a trademark or brand. For example, it would be possible for an applicant to attempt registration of “your-trademark.sucks” in the “.sucks” gTLD registry. Domain names of this nature could create confusion to consumers as to the source of goods, or harm the reputation of a brand.
The first option for protecting a brand is registering a domain name encompassing the trademark in all the new gTLDs. And while most gTLD registry fees are likely to be modest, in the aggregate this can become a very costly option, and would only prevent someone from registering a domain name that is exactly registered within a new gTLD. It would not prevent registration of a slight variation that encompasses a trademark. However, ICANN has established mechanisms that operators of these new gTLDs must implement that allow trademark owners to protect their interests within the new gTLD infrastructure. Additionally, an operator of over 200 gTLDs offers a mechanism that allows trademark owners to protect their brand within the gTLDs that it operates.
The Trademark Clearinghouse (“TMCH”) has been established to help protect a trademark owner’s brand. The TMCH is a global repository for trademark data, and all new gTLD operators must use the TMCH to provide protection mechanisms mandated by ICANN. The functionality of the TMCH is at the domain name level, meaning it could prevent someone from registering “your-trademark.sucks” within the “.sucks” gTLD.
Trademark owners submit their trademark data for verification to the TMCH. After verification the trademark data is cataloged in one centralized database for future use in conjunction with the services that the TMCH facilitates. Registration for trademark holders is for either a one, three, or five year period. The maximum cost for to register a single trademark for each period is $150, $435, and $725, respectively.
The TMCH facilitates two main services that assist in the protection of trademarks. First, a gTLD operator must provide a Sunrise service. The Sunrise service is a period of 30 days, in which a trademark owner that has registered with the TMCH is offered first option of buying a domain name that incorporates the trademark. Domain names are assigned on a first come, first serve basis within this Sunrise period.
The second service facilitated by the TMCH is the Trademark Claims service. This mandates that a new gTLD owner/operator must provide notice to a domain name registrant whom attempts to register a domain name that matches a trademark in the TMCH database. If the registrant continues with the registration process, the trademark holder receives notice, which would allow the trademark holder to initiate appropriate action if the owner chooses. A gTLD operator must provide the Trademark Claims service for the first 90 days of general registration, which is the period directly subsequent to the Sunrise period.
Another way to protect a trademark is through a company that offers a blocking mechanism. The company Donuts will act as the operator of over 200 gTLDs, and will offer a service named Domains Protected Marks List (DPML) Blocking, to protect a trademark holder’s trademark and brand. This service allows a trademark holder who has registered with the TMCH to block registration of a domain name containing an exact match of the term (usually the trademark) selected for DPML Blocking in all of the gTLDs that Donuts operates. For example, if a company owns the trademark “abc” then the company could register for blocking “abcc.com” because it contains the entirety of the “abc” trademark. This blocking service is available for a term, initially either 5 or 10 years, with renewal for terms of either 1 to 10 years after the initial term. An initial term of 5 years is projected to cost $2,995 for DPML Blocking across all gTLDs that Donuts operates.
This is only a brief overview of the expansion of gTLDs and the trademark and brand concerns that may arise from this expansion, and the mechanisms in place that can help to protect a trademark and/or brand. Please do not hesitate to contact us with further questions, or to consider registering with the TMCH or DPML Blocking.