[co-author: James Stewart, Law Clerk]
The modern era of general Top-Level Domains (gTLDs) is here. The last several years of discussion, negotiation, public comment, lobbying, applications, and objections have finally led to delegation of the first new gTLDs in several years—the first handful in a sea of hundreds to thousands of new gTLDs—which will forever change the landscape of what Internet users put into the address bar of web browsers. As previously reported, ICANN has begun delegating these new gTLDs, following entry into relevant registry agreements with the applicants for those gTLDs.
Along with the delegation of the new gTLDs, these new registries will open to allow the registration of second-level domains by third parties. Before opening to the public, each of the registries for the new gTLDs will open to trademark owners, registered with the Trademark Clearinghouse, for an initial Sunrise period—allowing trademark owners a first opportunity to secure second-level domains on the particular gTLD which incorporate their core marks. To that end, a number of Sunrise periods are currently open, or set to open within the coming weeks for the following gTLDs:
*gTLD registries which are covered under the Donuts Domain Protected Marks List (DPML)
Many more gTLDs are forthcoming-- ICANN is announcing newly-delegated registries each week, and many other gTLDs' Registry Agreements have been signed.
Of course, each brand owner must decide whether they wish to reserve any of their brands under each of these newly-delegated gTLDs and how to modify their offensive and defensive domain name registration strategies. This includes consideration of whether to also sign up for any of the "priority" registration programs offered by the gTLD applicants who are running several gTLDs.
In addition to proactive acquisition of second-level domain names which incorporate a brand’s key trademarks, forward thinking brand owners have the opportunity to acquire descriptive or generic terms frequently used in their commercial space as second level-domain names. For example, a clothing wholesale company could acquire the second-level domain for “wholesale” on the .CLOTHING registry, providing the company with the domain name <wholesale.clothing>. Other examples include <cheap.flights>, <affordable.luxury>, <management.training>, and an infinite number of other options depending on the particular industry of a brand.
Second-level domains which capitalize on commonly used or descriptive terms in a brand’s industry could be used to help Internet users locate the brand on the Internet in a logical and easy to remember manner. Developing a list of desired second-level domains in the new gTLD registries and incorporate the same in the promotional strategy of a brand will require a collaborative effort between the brand’s legal and marketing professionals.
However, brand owners will not enjoy the same priority purchasing for descriptive second-level domain names on the new gTLD registration as they do when registering second-level domain names which incorporate a brand’s trademarks registered with the Trademark Clearinghouse. To that end, brand owners should act quickly to identify second level domain names of interest and the corresponding registries for the same in order to obtain the desired targets as soon as possible once the relevant registry is open to the general public. If brand owners delay, they may be faced with the unfortunate circumstance of paying cyber squatters large sums of money for the desire domain name—or worse, it could land in the hands of a direct competitor.
Outside counsel will be able to assist interested brand owners in developing a strategy which provides comprehensive brand protection for a company’s core trademarks and allows the company to take advantage of the valuable business aspects of the new gTLDs.