New Top Level Domains Present Brand-Protection Challenges

22 August 2013 Privacy, Cybersecurity & Technology Law Perspectives Blog

New generic top level domains (gTLDs) are set to greatly expand the number of available top-level domains in the coming months. Among the hundreds of new gTLDs that will be introduced shortly are “.shop”, “.news”, “.computer”, and “.store”. The initial evaluation of applications submitted for these and hundreds of other top level domains is scheduled to be completed by August 2013.

While these new gTLDs provide opportunities for brand owners to promote themselves and their products, they also present a new avenue for potential infringement. A greater number of gTLDs means an exponentially increased number of possible opportunities for domain name squatting, typo squatting, or trademark infringement. Accordingly, trademark owners must be aware of steps that can be taken to protect their intellectual property rights against cybersquatters and others who would seek to profit from the wrongful registration of domain names utilizing the new gTLDs in a manner that could result in consumer confusion or a lack of brand control.

To help combat such potential problems for brand owners, ICANN, the entity responsible for the domain name system and its planned expansion, has set up the Trademark Clearinghouse. In short, the Trademark Clearinghouse is intended to create a central repository of trademark information in which brand owners can register information concerning a federally registered trademark (or its international equivalent) in order to secure for themselves certain benefits with respect to the new gTLDs, namely:

  • The ability to secure early registration of a domain name using a new gTLD at least 30 days prior to the public launch of the new gTLD, if the domain name is identical to the verified mark registered with the Trademark Clearinghouse (termed “sunrise” registration rights);
  • Notification of potentially infringing domain name registrations by the Trademark Clearinghouse for a period of at least 90 days following the opening of a new gTLD, permitting a mark registrant the opportunity to challenge registration of the domain name through typical channels (for example, UDRP arbitration proceedings or legal action).

Brand owners who wish to avail themselves of the benefits of the Trademark Clearinghouse should act quickly. With the launch of the new gLTDs scheduled to take place this fall, Clearinghouse applications should be filed in the near future in order to provide for ample time for validation.

The introduction of new gTLDs also emphasizes the value that can be obtained from a traditional trademark watch service, which notifies brand owners of potentially infringing trademark applications and domain name registrations.  Robust watch services will monitor the new gTLDs to provide notice of conflicting domain names. An added benefit of employing a watch service is that, unlike The Trademark Clearinghouse, a watch service will identify for the brand owner third party domain name registrations that are highly similar to the owner’s mark, but not necessarily identical.

The forthcoming expansion of available gTLDs provides brand owners with opportunities to stake out new online space with new domain names. The unfortunate reality, however, is that the expansion of online infringement and cybersquatting may strongly outweigh those positive opportunities. Brand owners should work with their trademark counsel to implement a strategy to efficiently and effectively police their trademarks in this new environment.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services