The New Generic Top-Level Domain Program

The domain name registration system (DNS) is expanding. Over a thousand gTLDs (generic top-level-domains) will be rolled out soon and this will significantly impact brand owners. A top-level domain (TLD) is what appears to the right of the “dot” in a domain name. Examples of TLDs are .com, .net and .org. The Internet Corporation for Assigned Names and Numbers (ICANN) wanted to expand the 23 TLDs to over a thousand. This led to an application process in 2012 that would permit any entity with an interest in running a registry to apply for a gTLD. ICANN has now launched the first group of gTLDs. For the first time, brand owners can now register for a domain name in a registry in a specific industry.

The new gTLD program has built in a couple of mechanisms to protect brand owners. One such mechanism is the Trademark Clearinghouse. The Clearinghouse will verify information from trademark holders and distribute it to registries and registrars. If you register your trademark with the Trademark Clearinghouse, you will be notified when a third party files an application to register a domain that is identical to a trademark registered with the Clearinghouse. In addition, the third party that is seeking to register the domain will receive a warning. If the warning is ignored and the third party continues to seek registration of the domain, the trademark owner will be notified.

The new gTLDs will include brand names, geographic indicators, community and industry identifiers such as .beauty, .fashion and .cars. All gTLDs are required to provide a period of time when only brand owners registered with the Trademark Clearinghouse may purchase domain names. These domain names will reflect the marks registered with the Clearinghouse, but only for the identical mark. Next the domains will be offered to the general public.

In order to register a trademark with the Trademark Clearinghouse you must submit to the Clearinghouse:

• (1) proof of ownership of the trademark;
• (2) proof of use of the trademark in commerce; and
• (3) payment of the registration fees.

The fees are as follows: $150.00/one year, $435.00/three years or $725.00/five years per trademark. These fees add up quickly. Each trademark owner will need to evaluate their budget and determine if registering with the Trademark Clearinghouse is financially prudent for their organization. It may make economic sense to register only your key brands.

One option is to order a watch service that provides notice of domain name registration with the new gTLDs. Another option that remains available is to file a UDRP proceeding with ICANN, challenging a registered domain name with a new gTLD. Lastly, each new gTLD operator will be required to have a domain name dispute procedure available. Such proceedings will be referred to as Uniform Rapid Suspension Systems (“URS”). This new dispute resolution mechanism will have a lower filing fee than the UDRP proceedings, but it will require a more substantial level of proof for a Complaint. The remedies available under a UDRP proceeding and a URS proceeding will vary. A URS resolution will not transfer the domain, but the subject domain name will be suspended.

This new expansion of the DNS will bring new challenges for brand owners. There will be increased responsibility for watching and monitoring the marketplace in an effort to prevent domain abuse. In addition, there will be increased costs for registration with the Clearinghouse or with engaging additional watch services, and expenses for enforcing your rights against third party domain names filed with the new gTLDs. The roll out of new gTLDs has already started and so has the potential for abuse. According to the data released from the Trademark Clearinghouse, unknown entities have pre-reserved their interest in domain names related to the nation’s 50 most valuable brands. Many brands are choosing to not register with the Clearinghouse and instead file defensive registrations. Some examples are apple.guru, iphone.guru, and target.clothing. If you want to register your trademark with the Trademark Clearinghouse or need counsel in regards to a domain name dispute, please contact our office and speak to one of our NY trademark attorneys.