Are You Ready for New Generic Top-Level Domains?

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generic Top-Level Domains

With hundreds of new gTLDs to police, CIOs will need a strategy to protect the company’s trademarks and other intellectual property. Here are some guidelines.

By Mark Partridge

The Internet is changing. Domain names are no longer limited to .com, .net or .org—the standard generic top-level domains (gTLDs)—and the less common country code domains (ccTLDs) such as .co, .me or .uk. Hundreds of new gTLDs will start coming online as soon as this month. Are you ready?

Many companies will be turning to the IT department to navigate this new expanded online environment. However, the threats and opportunities available go far beyond the cyber-squatting that has become an unfortunate cost of doing business. With hundreds of new gTLDs to police, IT leaders will need a new strategy to protect the company’s trademarks and other intellectual property (IP). 

The Internet Corporation for Assigned Names and Numbers (ICANN), the private entity responsible for managing the global domain name space, signed the first four contracts to launch new generic top-level domain name registries this fall. Hundreds more will follow during the next few months, and a complete list of the applications and their status can be found at www.icann.org.

The new gTLD applications include industry terms such as .cloud, .software, .app and .tech; geographic terms such as .london, .berlin, .africa and .nyc; and brand names such as .chevrolet, .microsoft and .zappos. 

There are ongoing discussions regarding the risk of name collisions with the naming conventions used by some internal company networks and the risks arising from a potentially “dotless” Internet. These technical issues merit close attention, and they may dwarf the Y2K challenges that caused concern at the start of the new millennium.

Our focus here, however, is on the challenges presented at the second level—the space to the left of the dot. In the existing .com world, enforcement proceedings and defensive registrations to protect trademark rights have become a common but unwelcome cost of doing business. To meet the new challenges, CIOs should adopt a strategy that includes these steps:

· File trademarks in the Trademark Clearinghouse (TMCH).

· Register desired marks and names in the new TLDs.

· Create an effective enforcement plan.

Trademark Clearinghouse

The TMCH is a database for recording existing trademark registrations and evidence of use. It offers several key benefits:

1. Recording in the TMCH is required to participate in “sunrise registration” in the new gTLDs. This allows trademark holders to secure matching domain names in a new registry before it is open to the public. 

2. Recording in the TMCH is also required for IP claims notices. This feature lets applicants know when they attempt to register for a trademarked term, and it also informs the trademark owner.  

3. Clearinghouse records may be used to support claims under a new dispute procedure called the Uniform Rapid Suspension (URS) system. This greatly reduces the potential cost of enforcement.

The basic fees for the TMCH are $150 for one year per record, plus legal or agent fees, depending on the amount charged by your advisors. 

Domain Name Registration

Obtaining both active and defensive domain name registrations is actually a long-standing best practice in the more familiar world of .com and .net. Securing the rights to a low-cost domain—or even many of them—is quite a bit cheaper than legal action to enforce trademark rights after the fact.

The practicality of this strategy in the expanded Internet is unknown, however. The fees charged for domain names in the new gTLDs will be determined by the registry owner, so it is not yet possible to project potential costs. Given that there will be many new gTLDs with the possibility of a vast number of potential domain name registrations relevant to a company’s brands and business, most companies will want to set priorities and a reasonable budget.

This article was originally published on 2013-10-09
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