gTLD updates for brand owners: First new gTLDs delegated, non-Latin gTLDs, a new product to defend your marks and recent changes to ICANN Registry Agreements

by DLA Piper
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HIGHLIGHTS

  • Brand owners should prepare for the impending release of numerous new gTLDs – the first few of which will be open for registration soon, and even sooner during the sunrise periods for brand-owners who have registered their trademarks in the Trademark Clearinghouse.
  • A product to block registered trademarks from being registered as domain names in 200+ new gTLDs has been unveiled.  Brand owners must consider whether this new product should be part of their overall domain name enforcement strategy.
  • *  Brand owners that are negotiating gTLD Registry Agreements with ICANN should be aware that recent changes (as of October 23) have been made to the draft form agreement.


Initial gTLD delegations, including non-Latin gTLDs

After years of discussion, delay, and paperwork, ICANN has finally announced the delegation of the initial four new generic Top Level Domains (gTLDs). Second-level domain names will be available for registration under these four new gTLDs at the conclusion of the sunrise period available to those who have registered their trademark rights with the Trademark Clearinghouse.

The first four new gTLDs are especially novel as they are composed of non-Latin strings – a first for gTLDs. The four new gTLDs delegated by ICANN on October 23, 2013 are:

  • (xn--ngbc5azd) – Arabic for "web/network"
  • (xn--80asehdb) – Cyrillic for "online"
  • (xn--80aswg) – Cyrillic for "site"
  • (xn--unup4y) – Chinese for "game(s)"


Immediately following the initial 30-day sunrise period, during which Trademark Clearinghouse registrants will have the first opportunity to acquire second-level domains for the new gTLDS, the general public will be given access to the new gTLDs, subject to restrictions imposed by individual registries. These four are simply the very first wave of hundreds of new gTLDs to come. 

In light of the imminent influx of up to 1,400 new gTLDs, now is the time to proactively consider your company's brand protection strategy with respect to the new gTLD landscape, in connection with both acquisition and enforcement of domain names.

Donuts DPML product to block marks from 200+ new gTLDs

Donuts Inc. is one company that is responsible for hundreds of the forthcoming gTLDs. Donuts has filed for over 300 applications for new gTLDs, many of which may be delegated in the coming months.  Prior to delegation of any of their new gTLDs, Donuts has released details of an innovative product created to protect the trademark rights of owners in the rapidly evolving environment of new gTLDs.

The product, known as the Domain Protected Marks List (DPML), will allow the owners of registered trademarks to purchase a term, which will block the registration of that term across all 200+ of Donuts’ new gTLDs for a period of five years. The DPML does not provide users with domain name registrations – instead, the DPML will operate in a similar manner to the .XXX block. A DPML registration will prevent cybersquatters from registering a second-level domain identical to a registrant’s trademark and keywords that contain the trademark in all of the Donuts-owned gTLDs. Donuts believes that this is a compelling result, given that companies will no longer need to use IT resources to defensively acquire and maintain domain names that they have no interest in using.

Clients interested in purchasing the DPML protection should first ensure that their core trademarks are properly registered with the Trademark Clearinghouse. Of course, this step is also crucial in order to provide rights holders with the benefit of priority second-level domain registration during sunrise periods for all of the many anticipated gTLDs.

Both the Trademark Clearinghouse and the DPML registry should be considered within brand owners’ larger domain name enforcement strategy, particularly as more and more new gTLDs are delegated and the floodgates open for new and potentially-infringing second-level domains.

Revisions to gTLD Registry Agreement with ICANN

For those brand owners that have applied for a new gTLD, and have received approval of their applications, one of the next big steps is in reviewing and negotiating a Registry Agreement with ICANN, governing the rollout and operation of a gTLD. Applicants in this position (or who are still awaiting approval) should be aware that on October 16, 2013, ICANN provided a new version of the Registry Agreement. The main change to the Registry Agreement since the previous draft released in July, is found in Specification 6, which deals with "Registry Interoperability and Continuity Specifications."

The changes to the specification are related to name collision occurrence management. The catalyst for these changes was the release of an ICANN study on "name collision, which is a phenomenon that occurs when a user is directed to the wrong place on the web, due to a domain name's similarity to the name of an internal resource on a user's network. These revisions to the Registry Agreement will give ICANN more time to consider the effect of name collision (effectively delaying the actual availability of new domain names under the gTLDs), as well as requiring existing registries to report certain data to allow for the continued study of name collisions.

If you are currently negotiating or preparing to negotiate your registry agreements, be sure to download the most recent version of the registry agreement, which should always be available here.

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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