“The new gTLDs are scary” says the brand owner

For a long time it was just a theory, but it now it has become practice: the new domain extensions (new gTLDs). Since the first of these have been released on the market, we have noticed that there is some restlessness from the brand owners: what should they expect?

In the conversations we have had with these parties (existing customers, trademark offices and brand owners) we have noticed how much unclarity there still is. In two blogs I will go in depth in the whole brand story. This first blog is portrayed through the eyes of the brand owner of the trademark office. The second blog will be portrayed with the technical aspects from the provider.

Hopefully the new extensions will not be ‘scary’ any more but be seen as an opportunity!

What is this all about?

The initiative was meant to open the Internet to a large number of new extensions – the letters at the end of a domain name such as .co.uk and .com. In the coming years hundreds of new extensions will be released, and in all of these extensions, different parties may register a domain. More background information can be found in our trilogy about the past,the present and the future of the new gTLDs.

The new extensions offer many opportunities: it would be great if you could register tasty.cakes instead of susanstastycakes.biz because the rest had already been taken. But the new extensions also come with a bit of a risk: the moment I register apple.laptop, a company situated in America should raise their antennae.

Brand protection

In the preliminary phase, companies who specialized in Intellectual property had a finger in the pie. Any proposal from the ‘technical’ side was bombarded with questions from the ‘legal’ side. The result being a process in which both the rights of trademark holders are respected (this blog) and the application and management of domain names work as fluently as possible (next blog).

Active protection – Sunrise

A registry may not just release domain names under its extension: there has to be a minimum of 30 days in which trademark owners can apply for their domain. This is called the Sunrise period. As an example: you may only register the domain apple.laptop if you own the brand apple. Nobody else may register this domain. A laptop seller trying to make money with apple.laptop will not have a chance, the iPhone manufacturer certainly will.

It may of course also happen that a brand is registered to several companies. ‘Apple’ does not only have to be the brand of the iPhone manufacturer, but also a British apple farmer. Both companies have the same rights in this case. But who will get the domain? That depends on the extension: usually double applications will be auctioned to the highest bidder but in some cases it is based on fist-come, first-served.

Passive protection – Trademark Claims

Obviously a brand owner will not register his brand in all of the extensions: there are more than 700 expected extensions! Coming back to the previous example: Apple will not lose sleep over apple.cake but probably will with apple.laptop.

To ensure a certain amount of security for the other extensions, the Trademark Claims period was introduced. As soon as a domain name is registered corresponding to a trademark, the brand owner will be informed “apple.cake has been registered”. This way he can assess if there has been an infringement of his rights, and if necessary, take action. This action is the same as in the current situation where someone infringes a trademark with a .com or .co.uk domain.

Furthermore, during the first 90 days that the domain has been released, the applicant of the domain will receive a similar notice to “Please note, this domain may infringe the rights of third parties as this brand has been registered by the following brand owners” followed by a list of trademark details. The applicant can then decide to carry on with the registration or not.

Other possibilities

In addition to the above mentioned services for all extensions, several registries have further accommodated the protection of a brand. The best known example is the DPML (Domains Protected Marks List) from Donuts. For a fixed fee, your brand name can be blocked for all of the extensions (expected to be between 200 and 250) of the registry Donuts. Obviously the brand owner may use one or more of these domains! A similar solution is offered by other registries.

Trademark Clearinghouse

All of the above mentioned protection mechanisms have one thing in common: somewhere it has to be known whether you have a trademark. To simplify the procedure for the registries (the mangers of the extensions) and the registrars (the parties reselling the domain names) the Trademark Clearinghouse – TMCH in short – was founded. In this centralized system the validated brands are precisely kept.

Application can be done directly through the Trademark Clearinghouse, but it would be easier to do this through an agent. Openprovider is a TMCH agent and provides full support in the application and validation of your trademark.

Plan of action

The new extensions will obviously provide new opportunities. I have not discussed this in detail in this blog but please read my previous blogs concerning this. If you decide to do something with these new extensions – actively or passively – then this step-by-step plan may help:

• Read through the matter: in this and previous blogs, and on our website a lot of information has been posted. Our Account Managers are at your service via e-mail or telephone.
• Decide whether you want to be active, passive or are not interested. Are you not interested? Then no further action is required. Please note that you will then be unable to register your domain in the Sunrise period and will also not be informed if someone else uses your brand in another extension.
• Open an account with Openprovider if you have not done so already. This is not a requirement (other parties will have similar services) but our experienced team can easily help you through the process.
• Validate your brand through the Trademark Clearinghouse. This validation can be initiated via our control panel. The world of new domains now lies at your feet!
• Apply for your domain with precedence in the Sunrise period of the extension of your choice.
  Look into related services such as DPML.
• Stay informed of other parties who register domains corresponding with your trademark.

Would you like to know more about how Openprovider can help you protect your brand? Contact us!

Published by Siemen Roorda