Dot-"What-to-Do-Now?": The Coming Wave of New Generic Top Level Domains

The recent decision by the Internet Corporation for Assigned Names and Numbers (ICANN) to add at least 1,000 new generic top-level domains (gTLDs) to the much narrower list of 22 traditional gTLDs already in use (i.e., .com, .org, .net, .edu) has ushered in major changes to the present domain name registration system and, specifically, the mechanism for protecting trademark rights in the new gTLDs.

Effective March 26, 2013, the first ever Trademark Clearinghouse, or TMCH—essentially a database of registered trademarks—will be made available to trademark rights-holders wishing to (i) take advantage of new procedures to obtain early domain name registration in new gTLDs or (ii) receive notice of potentially infringing new domain names.

The addition of these new gTLDs increases the threat that your brand will experience some form of online abuse. As a result, now may be the ideal time to update or consider implementing a domain name protection strategy. The TMCH, with its Sunrise and Trademark Claims services, will likely play a leading role in that strategy.

Sunrise Service: Early Bird Gets the Worm

Each new gTLD will have its own registry responsible for administering the gTLD. Each registry is required to provide early "sunrise" registration periods, normally 30 days from the date that the registry opens for business, during which only rights holders may register domain names that contain their respective trademarks.

So where does the TMCH come in? Only trademarks first recorded with the TMCH become eligible for this sunrise benefit.

Trademark Claims Service: Notice, Not Enforcement

For at least 60 days after the closing of the sunrise period, any party attempting to register a domain name that matches a trademark recorded with the TMCH via the TMCH's Trademark Claims service will receive a notification. If the party proceeds to register the domain name after receiving the notification, the TMCH will send a notice to the trademark owner(s) informing them that someone registered the domain name. While the Trademark Claims service will not reject registration of the potentially infringing domain name, it does put the potential infringer on actual notice of the trademark owner's rights, a potentially important consideration when a trademark owner chooses to enforce its trademark rights.

The TMCH: A Resource, With Limitations

While the TMCH will be a useful tool in managing your trademark portfolio in the greatly expanding universe of gTLDs, it has important limitations. For one, while it provides notice to potential infringers, it does not prevent the registration or use of an infringing domain name. Second, trademark owners have limited time to access sunrise registration periods (approximately 30 days per registry), and the notice provided to potential infringers from the TMCH is required for just 60 days after the sunrise period concludes. And, inevitably, there will be time and expense associated with managing records related to the TMCH.