Enter to open, tab to navigate, enter to select
Mastering Your Domains: New gTLDs and Brand Protection Strategies
Practical Law Legal Update 0-595-4045 (Approx. 3 pages)
Mastering Your Domains: New gTLDs and Brand Protection Strategies
by Practical Law Intellectual Property & Technology
| Published on 13 Jan 2015 • USA (National/Federal) |
A Legal Update discussing brand protection in light of the expanded generic top level domain (gTLD) program. This Update includes defensive steps trademark owners can take to monitor and address potential conflicts with their brands.
The Internet Corporation for Assigned Names and Numbers (ICANN) recently announced a series of policy and procedural reviews of its New gTLD Program in preparation for the next round of applications for new generic top-level domains (gTLDs). Brand owners who sat out the first application round should reexamine whether their current brand protection strategies address the opportunities and challenges of gTLD expansion.
The first round of the New gTLD Program opened in January 2012 and brought in 1,930 applications for new gTLDs (the string of characters furthest to the right in a domain name) over a three-month window. ICANN has completed evaluation of almost half of the first round applications and approved for launch approximately 480 new top-level internet domains. The vast majority of these new gTLDs are generic or geographic terms. Relatively few companies have obtained brand-specific gTLDs to date (most recently, CARTIER, SAMSUNG and BLOOMBERG). (See ICANN: Program Statistics.)
Most companies will likely choose not to apply for a new gTLD in the upcoming second round due to the complex technical and administrative requirements and costs of operating a domain name registry (for more information on these requirements, see Article, Generic Top-level Domain (gTLD) Expansion). However, the most dramatic result of the expanded gTLD program, with the greatest implications for brand owners, is the rapid proliferation of second-level domain names (the string of characters to the left of the rightmost dot) within the new gTLDs. Registrations of second-level domain names within the new gTLDs topped three million by the end of 2014, with the most popular new gTLD, .XYZ, averaging nearly 4,000 domain registrations daily (Registration Volume of new Generic Top Level Domains Nov 21, 2014, gTLD Registration Statistics (Nov. 24, 2014)).
Even if a brand owner opts not to apply for a gTLD, it needs to develop registration and enforcement strategies to address the new gTLDs and second-level domains. Given the gTLD expansion, a brand owner should:
- Carefully review and monitor the new gTLDs already available and the applications under review for potential risks to its brand.
- Assess the costs and benefits of registering its brand as a second-level domain in any of the new gTLDs.
- Consider registering its brand in the ICANN Trademark Clearinghouse, which monitors attempts to register a new second-level domain name that is identical to the brand.
- Consider engaging a new gTLD watch service for expanded policing of second-level domain names that may be confusingly similar, but not identical, to its brand.
- Understand how to avail itself of the new rights protection mechanisms introduced as part of New gTLD Program, including the Uniform Rapid Suspension system and Post-Delegation Dispute Resolution Procedure.
Brand owners should also monitor ICANN's internal program and policy review over the next year, which will include opportunities for feedback and public comment. Getting involved in this process may increase the likelihood that ICANN adopts policies and procedures that allow brand owners to cost-effectively promote and protect their brands.
For more information on the risks and benefits of the new gTLD program, see Article, Expert Q&A on Brand Protection in the Expanded gTLD Program. For a discussion of brand protection on the internet generally, see Practice Note, Brand Protection Online.