The New gTLDs from ICANN Are Coming: Plan, Don't Panic

by Ballard Spahr LLP
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By now, brand owners are probably aware of the new generic top-level domains (gTLDs) from the Internet Corporation for Assigned Names and Numbers (ICANN). They may have received literature from various sources about recording trademarks with the Trademark Clearinghouse and preparing for the first deployment of new gTLDs. There is no cause for alarm yet, however, and ample time to formulate a thoughtful, cost-effective strategy. We can help.

Updated Information

It is important to have the most up-to-date information about the new gTLDs because the policies are fluid and still in debate. ICANN is meeting this week in Beijing to discuss the launch of the new gTLDs. Ballard Spahr attorney Amy Mushahwar is attending the meeting, and we will have updated information as it continues to become available. More information from the China meeting is available here.

Security concerns are also an important topic at the meeting in Beijing. We will issue an alert specifically focusing on the data security and privacy issues presented by the new gTLDs in the coming days.

Here is what we know so far:

New gTLD Launch

It has been reported that the first new gTLDs will launch as early as April 23, 2013. This is a media launch, however; the actual deployment date will be later in the year. While it seems no one knows for certain when the first of the new gTLDs will deploy, Jeff Moss, Chief Security Officer of ICANN, predicted August 2013 in a recent article by The Register:

“April is a launch date in the sense that it’s a public launch, a media launch, an awareness-raising exercise – but we don’t actually sign contracts on the 23rd. Timelines will be adjusted depending on when registry and clearing houses are ready. It’s going to be August, I think, maybe.”

The thousands of new gTLDs will not launch all at once. In preparing a strategy, brand owners should identify the new gTLDs that they are particularly interested in (or concerned about), and understand the relevant timelines. Although specific timelines are not yet available, it is rumored the first new gTLDs to launch will be Internationalized Domain Names (IDNs). IDNs are domain names represented by characters other than the traditional ASCII characters (a through z).

The Sunrise Period

When the new gTLDs are deployed, the registries will provide brand owners with a Sunrise Period. During this period, brand owners may register their trademarks as domain names before registration opens to the general public. Use of the Trademark Clearinghouse, as described below, is essential for registering trademarks as domain names during the Sunrise Period.

The Trademark Clearinghouse

The Trademark Clearinghouse allows brand owners to record their trademarks with ICANN, and provides at least two important advantages:

  • Recording on the Clearinghouse is a prerequisite for registration of a domain name during the Sunrise Period.
  • For a limited time (as of this writing, the first 60 days of a gTLD’s launch), if someone attempts to register a trademark recorded on the Clearinghouse, the potential registrant and the brand owner will be notified.

The cost of recording a trademark on the Clearinghouse, according to the latest information, is about $250 per trademark for one year. Three- and five-year subscriptions are also available.

Of course, if the Clearinghouse subscription expires before the new gTLD in which a brand owner is interested launches, the brand owner will have to renew the subscription to take advantage of the Sunrise Period for the new gTLD. Unless a brand owner is interested in (or concerned about) a particular IDN domain platform, there seems to be little reason to rush to the Clearinghouse right now.

We suggest that brand owners map out a thoughtful plan for using the new gTLDs and protecting their brands in those spaces. Consider these key questions:

  • Do I want to use domain names in a particular new gTLD platform as a business opportunity or register domain names defensively? A list of the new gTLDs is available here.
  • Which of my brands am I interested in registering as domain names?
  • With regard to defensive registrations, how much is too much? Which brands are essential to protect, and in which gTLD platforms should I protect them?
  • How can I use the Sunrise Period and the Trademark Clearinghouse to protect my brands from infringers, cybersquatters, fraudsters, and domain speculators?

Members of our Intellectual Property Department and Trademarks Group advise clients on Internet law issues, including domain name dispute resolution, registration, policing and enforcement strategies, website linking, website terms of use, and keyword advertising. Members of our Privacy and Data Security Group regularly negotiate for businesses on privacy, cybersecurity, and Internet governance issues within international bodies, including ICANN and the World Wide Web Consortium (WC3).

For more information and help with preparing a sensible approach to registering domain names ad protecting brands against abuse, please contact Troy E. Larson at 215.864.8263 or larsont@ballardspahr.com, Mercedes Kelley Tunstall at 202.661.2221 or tunstallm@ballardspahr.com, or Amy S. Mushahwar at 202.661.7644 or mushahwara@ballardspahr.com.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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