Mark Your Domain or Someone Else Will: Making the most of your brand in the world of gTLDs.

ICANN, the Internet Corporation For Assigned Names and Numbers, has received nearly 2000 applications for strings of generic top level domains (“gTLDs”), the suffixes at the end of a website
address.  Some—like the .app string— are going for over $25,000,000 at auction.  What’s all the fuss?  After years of being confined to limited options for gTLDs (.com, .org, and country codes like .us being the most popular), we’ve entered a world of endless possibilities.  Whatever your industry—from software to charities; from pharmaceuticals to retail—there’s a relevant gTLD that would
look dashing at the end of your brand’s web address.  Some go so far as to predict that certain gTLDs will become industry standard, much like .edu in academics. 

If you don’t grab a gTLD, your competitors or a cybersquatter likely will. They could also snatch up domains like [yourbrand].sucks and [yourbrand].porn, which you wouldn’t think of using to market your brand, but which you might be inclined to purchase before anyone else uses them as a venue for a smear campaign.  To stay ahead of the curve, everyone’s scrambling to mark territory online.  Recent developments in ICANN’s procedures present unique opportunities for doing so, particularly for holders of federally registered trademarks.

How does the registration work? 

ICANN delegates the administration of domain registration to private and public entities and selects an entity to manage each “string” of domains—for example, all domains that end in “.realestate”.  Each gTLD string becomes open for registration on a date set by ICANN (see http://www.trademark-clearinghouse.com/gtld-calendar for a calendar of upcoming launch dates).  Once a string is open, the administrator will receive domain name applications.  If multiple applications are filed for the same domain name, it’s up to the administrator to sort out which applicant gets the domain.  This often involves an auction, and the administrator will award the domain to the highest bidder.  Typically, a gTLD domain will go for around $200, but those in high demand can start at much more than that.  Vox Populi, the administrator of the .sucks string, started domains at $2,499.

What’s the deal for trademark owners?

As a trademark owner, you get two important benefits.  First, you get first dibs on a domain that consists of your registered trademark. Second, you can warn and block others from registering domains consisting of your mark.  More on both of those benefits below.  Before you skip ahead, note that, in order to qualify, (1) you must have a federal trademark registration, issued by the
United States Patent and Trademark Office and (2) you must register your trademark with ICANN’s Trademark Clearinghouse (the “TMCH”).  A trademark registration requires a filing
fee of about $275, and will take at least a few months of processing by the trademark office.  The TMCH charges $150 to register a mark for the first year, and offers a scale of discounts for
trademark portfolios and multi-year registrations.

Now, for the benefits:

  • Priority for registration. Once your federal trademark is registered with the TMCH, you can register a domain name containing your marks 30 days before the general
    public may do so.  These 30 days are called the “Sunrise Period.”  The Sunrise Period promotes your legitimate purchase of a domain name over the purchase of that domain by someone who doesn’t use the name in connection with its business.  But the Sunrise Period benefit has its limits.  First, the priority only applies to domains that exactly match your registered
    trademark.  You don’t get priority to register any common misspellings or variations of your mark.  Second, the Sunrise Period gives you priority vis-à-vis the general public, but it does not guarantee priority over other trademark owners.  Someone who owns the same trademark as you do (likely in a different industry) could also try to take advantage of the Sunrise Period to register the same domain name.  The Sunrise Period benefit is more valuable if you’re the only one who holds a federal registration for your mark.  Otherwise, you may still need to contend with others, and face the possibility that the price for the domain name may escalate.
  • Preventing potential infringers. For 90 days after the Sunrise Period, during a time called the “Claims Period,” anyone applying to register a domain that consists of your registered mark will be warned that registration may infringe on your trademark rights.  The applicant will be required to acknowledge this warning before it’s allowed to proceed with registration.  The
    applicant can still register the domain after acknowledging the warning, but you’ll be able to use the acknowledgement against the applicant if you later argue that the applicant intentionally violated your trademark rights by registering the domain.  You will also receive a notification when a domain name that matches your mark is activated, so that you can enforce your rights if you object to the registration.  In addition to taking advantage of the Claims Period perks, you can hire a private company to block others from registering a domain consisting of your trademark. There are a number of such companies, and each one holds a portfolio of gTLDs.  For example, a company called Donuts holds the .restaurant domain, so you could engage Donuts to block others from registering [yourbrand].restaurant.

What’s the bottom line? 

Review your most valuable trademarks, and consider whether you should seek federal registration, if you haven’t already.  Take some time to evaluate whether you should purchase any of the gTLDs that are currently available.  You can access a list of available gTLD strings at http://newgtlds.icann.org/en/program-status/delegated-strings.  If you have your eye on a gTLD that has not
yet been launched, consider whether you should register your company’s trademarks with the TMCH in order to take advantage of the benefits described above.  Also consider TMCH registration
as a defensive strategy to prevent others from misusing your trademark in a domain name.

If you have questions about protecting your brand, contact Rob Bertsche, chair of Trademark, Copyright, and Intellectual Property Law Practice Group at 617 456 8018 or rbertsche@princelobel.com.