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New domain extensions (gTLDs): the rise of the dotBrand

Most companies are familiar with generic Top-Level Domain (gTLD) extensions, such as .com, .org and .net. In 2012, however, the Internet Corporation for Assigned Names and Numbers (ICANN) offered third parties the opportunity to apply to register new gTLD extensions.

The permitted extensions 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.

What changes should brand owners expect?

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

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

Novagraaf consultants can help you 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).

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 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.