Insights

21/10/2013

Move over .com!

A top-level domain (TLD) is the suffix at the end of a domain name: for example, the .com at the end of krogerus.com. TLDs can be divided into various categories, including country code TLDs (ccTLDs) and generic TLDs (gTLDs). Currently, there are only 22 gTLDs available for use by anyone, anywhere in the world – .com, .net and .org are the most prominent of these. However, the situation is about to change drastically.

Following the launch of the new gTLD programme, a total of 1,930 applications for new gTLD strings were filed with the Internet Corporation for Assigned Names and Numbers (ICANN). These included 1,409 unique strings. The most popular strings – .app, .home and .inc – were subject to about a dozen applications each. The first seven new gTLD strings* will become operative on 26 November 2013, with many more to follow in the coming months.

This insight examines the possible implications of the new gTLD programme for brand owners.

Increased freedom of choice

It can be a challenge these days to find a .com or .net domain name that is both practical and available. For example, had the krogerus.com domain name already been taken, Krogerus might have considered registering the domain name krogerusattorneys.com or krogerusfinland.com. However, neither of these would have been quite as convenient as the natural first choice.

Overcrowding of the current gTLD namespace is one of the main reasons behind the new gTLD programme. It is anticipated that the launch of an abundance of new gTLDs will bring more variety and choice to internet naming, making it easier for end users to locate the content they are interested in. In the near future, for instance, Krogerus could also opt to register such domain names as krogerus.ltd or krogerus.law.

From worldwide web to wild, wild west?

An increased freedom of choice is not necessarily purely positive. It can also increase the potential for cybersquatting and other types of online trade mark infringement. For example, gTLD strings such as .discount, .sale and .shop could become popular amongst companies selling counterfeit or look-alike products. Meanwhile, gTLD strings such as .exposed, .sucks and .wtf could be used to discredit or denigrate certain brands.

So, what can you as a brand owner do to stop second-level domain names such as yourbrand.shop and yourbrand.sucks from falling into the wrong hands?

Maintain control before the dot

The Trademark Clearinghouse (TMCH) was set up to address some of the potential problems faced by brand owners. A brand owner that has entered its trade mark into the TMCH will have the opportunity to register second-level domain names that are an exact match to that trade mark before they become generally available.

This so-called sunrise period will last for 30 days after the launch of each new gTLD. It will be followed by a trade mark claims period of at least 60 days. During this time, anyone attempting to register a second-level domain name matching a trade mark entered into the TMCH will be notified of the trade mark. Should the notified party decide to go ahead with the registration, the trade mark owner will be informed of this. It can then consider what action it wishes to take.

Some new gTLD registry operators will also offer their own rights protection mechanisms. For example, Donuts Inc., which has applied to operate 307 new gTLDs, will implement its own Domains Protected Marks List (DPML). The DPML will enable brand owners to block their trade marks from registration across all gTLDs operated by Donuts Inc. Most trade marks entered into the TMCH will also be eligible for inclusion in the DPML.

However, the DPML will provide more extensive protection than the TMCH. In addition to exact matches, it will also allow the blocking of second-level domain names fully containing an exact match. In other words, if included in the DPML, the trade mark EXAMPLE could be used to block both example.clothing (exact match) and fake-example.clothing (exact match plus).

…and also after the dot

Certain major brand owners have also opted to register their own gTLDs to distinguish authorised websites from unauthorised ones.

For example, the gTLDs .apple, .google, .mcdonalds, .microsoft and .visa have been applied for by the respective brand owners. This is a rather costly option, taking into account the technical requirements that all applicants must fulfil as well as the USD 185,000 application fee charged by ICANN. The next application round is also not likely to commence for another few years. However, especially for owners of large trade mark portfolios, registering one’s house mark as a gTLD could be worth considering. In Finland, applications have been filed by the City of Helsinki (.helsinki), Kone Corporation (.kone), Nokia Corporation (.nokia and .诺基亚) and Phenomena Group Oy (.promo).

Put a stop to infringements

In addition to new rights protection mechanisms, new dispute resolution procedures will also be introduced. These are intended to supplement, not replace, the existing Uniform Domain Name Dispute Resolution Policy (UDRP).

Most notably, the Uniform Rapid Suspension System (URS) will offer an even faster and more affordable means for dealing with infringements. The grounds for filing a complaint are essentially the same as in the UDRP. However, due to the very speedy nature of the proceedings, cancellation or transfer of the disputed domain name is not an option. Instead, if the examiner finds in favour of the complainant, the registry operator must immediately suspend the domain name for the rest of the registration period. In other words, the domain name will be prevented from directing to the original website. Instead, it will redirect to a webpage indicating that the domain name has been suspended following URS proceedings. It will not be possible to transfer, delete or modify the suspended domain name during the remainder of the registration period.

Plan of action

For brand owners, the new gTLD programme entails both a greater freedom of choice and a heightened risk of online trade mark infringement. In order to best be able to take advantage of the former and combat the latter, it is advisable to enter at least one’s most valuable trade marks into the TMCH. This is possible provided that the trade marks in question are registered or have been validated by a court of law.

In addition, the trade mark owner must prove that the trade marks are in use. This can be done by submitting a signed declaration of use as well as, for example, a screenshot of the trade mark owner’s website, copies of marketing materials or photographs of goods bearing the trade marks. Proof of use in the traditional sense is not required. Rather, a single sample is sufficient.

Nevertheless, due to the relatively short duration of the sunrise and trade mark claims periods, it will become even more important to invest in quality domain name watching services.

* .bike, .clothing, .guru, .holdings, .plumbing, .singles and .ventures

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