"Little more than a predatory shakedown scheme” to “enrich the domain name industry rather than benefit the broader community of Internet users.” That was how West Virginia Senator John Rockefeller described the potential registration of the .sucks generic top level domain (gTLD) by ICANN.
Yet this is somewhat familiar territory for brand owners. Even before the new .sucks gTLD was proposed, there was nothing to stop someone from registering a domain using a trademarked brand and the word “sucks,” e.g. YourBrandSucks.com. The new introduction of gTLDs though require brand owners to navigate new and murky waters to ensure optimal protection.
Once ICANN approves a new gTLD, the entity selected to operate the new gTLD is known as the “Registry Operator.” This Registry Operator is then responsible for the operation, management, and distribution of all web addresses under that gTLD. These Second Level Domains to the right of the .com, e.g. dinsmore.com, can be registered by any third party.
While Registry Owners are required to comply with ICANN requirements to protect established and verified trademarks, it is up to the brand owner to know what steps they need to take to ensure those protections cover them.
The Trademark Clearinghouse is the first place a brand owner should look for brand protection with the new gTLDs because every new gTLD is required to go through the Clearinghouse.
Before they can take advantage of the protections though, brand owners will have to present evidence to the Clearinghouse of a valid and enforcement trademark. This includes evidence of both rights and current usage. The overall process is quick and inexpensive, costing only $725 for 5 years of protection for a mark. Most importantly, once registered, brand owners can take advantage of two unique protections through the Clearinghouse.
Sunrise Period: After registering with the Clearinghouse, a brand owner is eligible for priority registration during the “Sunrise Period” for each new gTLD. The Sunrise Period generally lasts 30-60 days, depending on the Registry Owner, and allows brand owners the ability to register their trademark first as a Second Level Domain for the new gTLD.
Once the Sunrise Period closes though, there are no second chances. The brand owner will now be competing with third parties in a race to see who can register the trademark as a Second Level Domain first.
Trademark Claims Service (TCS): Following the Sunrise Period, Registry Owners must also provide a Trademark Claims Service period for at least 90 days. During this period, Registry Owners will issue warnings to third parties attempting to register domains that are identical to trademarks registered with the Clearinghouse. Brand owners will also receive notification of the third party’s attempted registration so they can take action, if desired.
Ultimately, if the brand owner misses the Sunrise Period and the third party decides to move forward despite the warning in the Trademark Claims Services, the brand owner will have no other recourse but to commence a proceeding before ICANN to protect its brand.
In addition to the Clearinghouse, several Registry Owners have decided to allow brand owners to block registration of names containing their trademarks across all new gTLDs managed by that particular Registry Owner. To qualify for this block, the brand owner must have registered their mark with the Clearinghouse.
There are a few downsides to these types of services, however. Generally, these registries are ineffective against “type-o squatting” as the registries will only protect exact trademarks. These services are also not cheap and are only available for short terms.
Determine Which gTLDs Impact Your Business
At this early stage, brand owners should examine which of the new gTLDs could impact their specific business. For example, a brand owner that sells apparel should focus on .clothing or .shoes gTLDs, or even gTLDs regarding .cheap, .bargains, or .boutique. The goal is not to register for every gTLD, but to identify and protect against those that are most likely to cause confusion in the marketplace.
Register Your Primary Brands with the Clearinghouse
Early registration is important to ensure access to the Sunrise Periods and notice of third party attempts to register your brands. Brand owners do not have to use registered agents or attorneys, but can instead register themselves at http://www.trademark-clearinghouse.com.
Monitor the Sunrise Periods
Brand owners should also pay attention to upcoming Sunrise Periods and new gTLDs as they are approved. ICANN maintains a list at this link: https://newgtlds.icann.org/en/program-status/sunrise-claims-periods.