The New Top Level Domain Names are Available
The new top level domain names are rapidly becoming available.[1] More than 100 new Top-Level Domains (TLDs) have been delegated – added to the Internet’s Root Zone and potentially available. Hundreds more will follow over the next few months as ICANN has said they will be released in batches of 20 a week. A list of delegated domains is available here
http://newgtlds.icann.org//en/program-status/delegated-strings
The Timelines
The Sunrise periods for these new domain names have commenced. Sunrise services allow trade mark holders an advance opportunity to register domain names corresponding to their marks before names are generally available to the public.
New gTLD registries are required to offer a Sunrise period of at least 30 days. At the conclusion of the sunrise period the new domains will be available to the public on a first come basis. In order to participate in the Sunrise process a trade mark owner must have a validated trade mark entry in the Trademark Clearinghouse. It is currently taking 4-6 weeks to complete the process of having a registered trade mark validated in the Trademark Clearinghouse.
A listing of the sunrise periods with applicable start/end dates is available here
Steps Brand Owners Should Take Now
First, it is clear that all brand owners should monitor the status of relevant new TLDs, including the listing of delegated domain names and sunrise start/end dates. It is important to take steps now to secure important domain names before others obtain registrations. There will be important innovative opportunities. For example TorontoNissan.cars allows alignment between the domain and the business and is more intuitive then the current choices
Second, consideration should be given to how the brand will be marketed in new TLD(s) and the timing for doing so. For example, should the brand be registered as a second level domain name? A new Internet strategy may need to be developed that focuses on specific new TLDs. Existing domain name portfolios may need to be rationalized.
Third, brand owners should monitor the activities taking place or likely to take place in the marketplace. A brand owner should closely follow the activities of its competitors as there may be situations where the use of a new TLD may result in a competitive advantage.
Fourth, brand owners should submit their key marks to the Trademark Clearinghouse so that it will be possible to apply for sunrise registrations and to allow the registration of brand name(s) as part of a defensive domain name blocking strategy. Because so many new TLDs are potentially in play any strategy must be carefully controlled and applied in light of the potential costs involved.
Finally, the brand owner must monitor potential brand abuse. It is no longer economic to implement a defensive blocking strategy for all TLDs and the emphasis will have to be given to specific domains and monitoringactivities . Consideration should also be given to which Rights Protection Measures can be used in the event of cybersquatting.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
[1] This note is part of a continuing series notes and is current to January 9, 2014.