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New domain extensions (gTLDs): prepare yourself now!

Most organisations are familiar with generic Top-Level Domain (gTLD) extensions, such as .com, .org and .net. However, last year, ICANN (the Internet Corporation for Assigned Names and Numbers) offered third parties the opportunity to apply to register new gTLD extensions.

Personalized extensionsThe permitted extensions could include a ’.brand’ (for example. .novagraaf), a generic word or term (for example, .shop) or a geographical place (for example, .london). In addition, interested parties were invited to apply for Internationalised Domain Names (IDNs) covering different (non-Roman) scripts, such as Arabic, Chinese or Russian. Each of these new gTLDs and IDNs (jointly referred to as ‘TLDs’) will be managed by a gTLD or IDN registry, much in the same way as the .com, .net and .eu are currently managed. Nonetheless, this expansion in the number of TLDs will change the internet as we know it for ever.

What changes should brand owners expect?

ICANN received applications for approximately 2,000 new extensions in its initial registration period. After removing duplications, the actual number of new TLDs is estimated to be around 1,400, and around 600 of those are expected to result in TLD registries, which will be open to interested brand owners; for example, gTLDs such as .legal or .shop.

As with existing gTLD extensions, applications to register domain names will be open to all. As such, brand owners will need to be vigilant for the registration of domain names that may infringe their trademark rights and potentially confuse their customers.

Novagraaf can help you to prepare

Although opinions are divided as to the likely impact of the new TLDs on brand owners, Novagraaf’s experience of previous TLD launches (such as the recent .XXX launch) shows the importance of developing a business strategy in advance of key launches. With the first TLD registries expected to open their doors this summer, now is the time to start considering your approach to future registrations and amending your online brand protection strategy in light of these potential new threats.

ICANN is establishing a Trademark Clearinghouse (TMCH) to facilitate the protection of trademark rights during the initial allocation and registration periods for domain names using the new TLDs. All new TLD registries will be required to consult the TMCH data to ensure that a set of mandatory trademark rights protection mechanisms are applied to all new domain registrations in (at least) the first 90 days of domain registration.

With the TMCH due to go live by mid March 2013, brand owners are advised to start preparing now if they are to: firstly, assess the cost benefits of using the new TMCH database for each trademark; and secondly, quickly and effectively upload and assert their rights for those selected trademarks.

With hundreds of TLD registry openings expected before the end of 2013, brand owners also need to determine which of the new TLDs may be relevant to their company and their brands. Once determined, they can then develop a strategy for which brands to register as domain names and which TLDs to monitor for potential infringement.

Novagraaf’s consultants can help you achieve this by:

  1. advising you on the establishment of your TLD registration strategy, including reviewing your portfolio to highlight key trademarks and TLDs of interest;
  2. registering your key brands with the relevant trademark registries;
  3. registering your (key) trademarks with the TMCH; and
  4. providing an ongoing and innovative domain watching service.

Establishing an appropriate internet and trademark registration strategy

Thanks to our knowledge of your company, your industry and your portfolio, Novagraaf can help you to develop and review your list of relevant trademarks and TLDs, and to assist you with the development of your domain name registration and monitoring strategy.

By prioritising the trademarks and brand names of key value to your organisation, we will help you to ensure that those valuable rights are registered and protected in the relevant territories. We can then help you to determine which of those trademarks should be registered with the TMCH. In our view, registration with the TMCH may not always be the most cost-effective method to defend your trademarks in this important new space; instead, the following should be considered to help determine whether or not to register trademarks with the TMCH:

  • Which trademarks are used in your key markets?
  • Which trademarks are vital to your online presence?
  • Which trademarks are sensitive to infringement/abuse in these markets?
  • Which trademarks did you include in your application to block .XXX registrations, if any?

Registering your trademarks at the TMCH

The TMCH is intended to function as a database of verified trademark information. Inclusion is only possible, therefore, when the trademark has been registered.

The TMCH is a key part of ICANN’s efforts to minimise the monitoring and enforcement costs and administrative overheads of rightful trademark owners by combining trademark information into one centralised register, rather than in each of the potentially hundreds of individual registries that will operate when the gTLDs become live and the ‘sunrise period’ begins. (The ‘sunrise period’ refers to the window of time allocated to a trademark owner to apply to a new TLD registry for a domain name using its trademark.) The TMCH will be operated by Deloitte, with technical support from IBM.

The TMCH is not in itself a rights protection mechanism, but it will function as a central platform for cost-effective participation in the individual TLD sunrise periods, and provide data for the operation of the Trademark Claims service (whereby a trademark owner will be notified by the TMCH of any potentially infringing applications that match its trademarks in any new TLD). 

The TMCH is expected to open for entries in mid March 2013 ready for the first registries to go live. As soon as these new TLD registries launch, they are required to link to the TMCH for a minimum period of 30 days for the sunrise period, followed by a minimum of 60 days for operation of the Trademark Claims service.

Including the official fees, the costs for registering one trademark with the TMCH using Novagraaf will be €295 per trademark for the first year. Annual renewal of the TMCH entries will be required. Should you decide to pre-register your trademark using Novagraaf for inclusion in the TMCH, we can offer you an early bird price of €250 until May 1 2013. Please note, that there is no penalty for early registration. The TMCH will accept early registrations but the annual fees will only be calculated starting on the first date that the first TLD will go live.

Domain watching service

Due to the costs involved, registration at the TMCH may not be the best option for some of your trademarks. Instead, you should consider the benefits of Novagraaf’s new TLD watching service. This has been developed specifically to meet the needs of brand owners seeking to monitor for unauthorised use of their trademarks in domain names, and will provide you with a monthly report of newly registered domain names that match search parameters of your choice, including wildcards and character substitutions (exact match only for IDNs). Once a match has been identified, you can then choose to oppose the registration of an infringing domain name using one of the legal rights systems established by ICANN. Our consultants can talk you through these systems in more detail and provide you with pricing information, should you be interested.

Contact us

For further information about any aspect of the TLD process or Novagraaf’s services, please contact either your consultant or Customer Support via the contact form in the right top of this page.

Please note that any Novagraaf and third-party costs mentioned are estimates only. Novagraaf makes no assertions as to their accuracy. Novagraaf also makes no assertion as to the future implementation of this ICANN proposal currently under discussion.