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:
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 email@example.com.