New domain name endings began being launched Nov. 26, 2013, and are expected to be released in batches of roughly 20 new gTLDs each week or 50 gTLDs each month thereafter during 2014. Trademark owners should be attentive to this now to not miss the launch of a new domain ending for which they intend to file a new domain name. The English language domain names with the first of seven new endings – .bike, .clothing, .guru, .holdings, plumbing, .singles, .ventures — is expected to issue by the end of January 2014.
This post highlights considerations for trademark owners in connection with the launch of 1,400 new generic top level domains (gTLDs), i.e., the suffix of domain names to the right of the dot (for example: .com and .hotel). Here is a link to an alphabetical link of all proposed domain names: http://www.newgtldsite.com/new-gtld-list/. Due to potential abuse in this new domain name real estate, special provisions have been put in place for trademark owners. This post provides background, describes the risks and opportunities and articulates a high-level conceptual approach to analyze how this development affects your business and how to proceed.
Background. The April 16, 2013, post contained an overview of the new gTLD launch program and an explanation of the Trademark Clearinghouse. In short, in order to record a domain name within the first 60 days that a new gTLD launches (the Sunrise Period), a trademark owner must first register its mark(s) in the Trademark Clearinghouse and provide validation of use of the mark prior to registering the domain name. For the most up-to-date information regarding the launch of the new gTLDs and their respective Sunrise Periods and trademark claim periods, see http://www.trademark-clearinghouse.com/sunrise that is updated periodically.
Why should I care? There are clearly two camps each with a school of thought on the new gTLDs. One camp believes trademark owners should offensively register domain names useful to their business and defensively file domain names such as .gripe, .suck and .porn to block others from doing so. They believe the costs incurred up front and on an annual basis to register and maintain the domain names are less expensive in the long run than pursuing infringers to stop use of a domain name in bad faith or that causes confusion with the brand. The other camp views the launch of these thousands of gTLDs as another land grab by large domain name registrars solely to create demand for their registration services and to profit from provision of the new Trademark Clearinghouse services.
Analysis of how to proceed. Before you make a determination as to which camp you are in and how to proceed, think through each of the steps below. Like all business decisions, this decision necessitates ascertaining the degree to which benefits to your business outweigh the costs. By reviewing each of these considerations in light of your existing trademark portfolio, your current and future marketing plans and your current and future search engine optimization (SEO) plans, you can determine whether and to what extent to register new domain names and whether to record a trademark or trademarks in the Trademark Clearinghouse.
- Identify new gTLDs among the 1,400 names to launch in the next two to three years in which one or more domain names should be filed.
- Identify new gTLDs within which defensive, blocking domain names should be filed to preclude others from filing, such as .gripe, .sucks or .porn.
- Develop a budget for recording marks in the Trademark Clearinghouse. The filing fees per mark to record are as follows:
- $150 for 1 year
- $435 for 3 years ($15 savings)
- $725 for 5 years ($25 savings)
- Because the new gTLDs are expected to take over two years to roll out, we suggest registering marks in the Trademark Clearinghouse for at least three years.
- Record marks to be used for filing and blocking in the Trademark Clearinghouse.
- Prepare and file evidence of use with the Trademark Clearinghouse (must be submitted prior to beginning of the Sunrise Period).
- Consider engaging a trademark watching service to monitor all domain names registered in the new gTLDs, because trademark owners will only receive Trademark Claims Notices for exact matches of trademarks registered in the Trademark Clearinghouse.
- As gTLDs of interest launch, promptly register your desired domain names during the relevant Sunrise Period.
- During the first 90 days after each gTLD launches, be prepared to promptly respond to each Claims Notice sent by the Trademark Clearinghouse giving you notice of domain names filed that contain your mark(s) registered in the Trademark Clearinghouse.
Please note that the only domain names that may be recorded and reserved during a Sunrise Period are those that (1) are an exact match for the trademark registered in the Trademark Clearinghouse or (2) were the subject of a successful Uniform Domain Name Dispute Resolution Proceeding (UDRP) and registered in the Trademark Clearinghouse. Special rules exist for domain names that contain characters that are not permitted domain name characters, such as commas, spaces, apostrophes and some periods. Rules permit up to 10 variations per mark for domain names containing these characters. We can assist you to determine whether to register trademarks and which variations make the most sense.
Please contact Susan Rector at Susan.Rector@icemiller.com with any questions. We are prepared to help you determine the best way to proceed to protect your marks and register new domain names that are most beneficial for your business.
This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.