If you thought there were already too many top-level (TLD’s) domains available, get ready for an avalanche!
If you are not already familiar with domain hierarchy, a top-level domain (“TLD”) is the core suffix of the domain, such as .com, .net, .org, etc. Most TLDs with three or more characters are referred to as “generic” TLDs (“gTLDs”). Beginning within days, the Internet Corporation for Assigned Names and Numbers (“ICANN”), Internet’s governing body, will make available over 1500 new gTLDs over the course of the next few years! These new domains will range from industry based domains, geographic based domains and even brand names like .nfl. Some new gTLDs won’t even be based on Latin scripts.
What are the implications of all the new gTLDs? Understanding how the release of the new gTLDs will affect your business or your brand is extremely important. First, it helps to understand that ICANN will release the new gTLDs in an effort to give businesses and trademark owners more options so they can avoid paying huge sums to recover domains already taken. Unfortunately, while that is theoretically a good thing, there will also be increased enforcement costs now and simply more gTLDs to worry about acquiring! Whatever advantages or disadvantages the release of the new gTLDs will create, your business must undoubtedly prepare in advance.
Protecting your business’s brand in advance of this release will be critical. ICANN has established the Trademark Clearinghouse (“TMCH”), a central database designed to verify and store information regarding nationally and multi-nationally registered trademarks. Trademark owners who record their marks with the TMCH will have the opportunity to pre-register domain names before each new gTLD is released to the general public. But, your trademarks must be registered federally first to be eligible for pre-registration. Once a new gTLD is publicly released, the TMCH will notify trademark owners about potentially infringing registrations. These benefits will only benefit trademark owners who record prior to the launch of pertinent gTLDs.
What should I do now to prepare for the release of any relevant new gTLDs?
First, your business should create a list of any relevant brands it desires to protect. Next, register all of your important, core marks at the federal level if your business hasn’t taken this step already. Then you should register each federally registered trademark for your core brands with the TMCH to capitalize on early registration. This will help your business avoid cybersquatting and having to deal with re-acquiring any new gTLDs. (The TMCH charges an annual fee of approximately $150 per mark for its services). If your business owns multiple trademarks, you should also consider engaging a trademark agent. Trademark agents are exempt from certain restrictions imposed by the TMCH. Most importantly, trademark agents will ensure that all marks are properly verified and notify you or your business when relevant gTLDs launch.
You or your business should identify any new relevant gTLDs that you want to protect from third-party registration. Trademark owners will have an opportunity to pre-register domain names containing any of their recorded marks during a 30-day “sunrise period” immediately before the release of each new gTLD. Businesses should also implement procedures for managing third-party registration notifications. For a period of 90 days following each new gTLD release, trademark owners will be notified whenever a third-party registers a domain name containing their recorded marks. It is strongly recommended that your business employ a mechanism for evaluating these notifications and taking any necessary enforcement action.