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Bar News - June 18, 2014

Intellectual Property Law: Best Strategies for Trademark Owners in the Realm of New gTLDs


The Internet as we know it is changing – and fast. From a time when virtually every website was a “.com,” there has been a slow but steady stream of companies and brand owners using other domain strings, mostly country-coded domains that had other recognizable or descriptive meanings, such as .me, .dj, .fm, and the most popular, .co.

But this steady stream is giving way to a veritable tsunami with the introduction of roughly 1,000 new generic top-level domains (gTLDs) over the next few years, ranging from the commonsense and self-explanatory (.menu, .social), to the more niche or obscure (.buzz, .glass, .limo). While the news of these “new” domains is not really new anymore – they have been all the .buzz since the beginning stages of the roll-out in early 2013 – as dozens of new gTLDs are introduced every month, they continue to present unique strategic and legal issues for brand and trademark protection.

In the old world of .com and its ilk (.org, .net, etc.), the best defense for brands and trademarks had always been a good offense: Advise clients to register domain names for their brand before a cybersquatter registers first and exploits the brand. This was relatively simple and affordable when there were only a few noteworthy gTLDs about which brand owners had to worry. But with the introduction of more than 1,000 new gTLDs, registering a domain with each one would prove cost-prohibitive for most.

Rather than try registering under each and every new gTLD, advising clients to develop a tailored strategy to identify the domain strings most relevant to their business and proactively register those domains may be the better approach. For example, a restaurant chain would likely want .restaurant, .menu, .bar, .pub, and .catering, but could pass on .surgery and .ninja. Brand owners should also look out for any new gTLD that includes part of their trademark – for example, AutoZone and JetBlue should be looking into .zone and .blue.

There are, however, less obvious new gTLDs that brand owners would also want to keep in mind when developing a focused strategy. There are some “unsavory” ones, such as .sexy and .adult, which brand owners will want to preemptively “block,” much like many did with the .xxx domain string in 2011. Even less obvious are domain strings that are likely to be used in ways detrimental to the brand, such as .fail, .sucks, and .gripe, as well as gTLDs that are likely to invite mischief and cybersquatter abuse due simply to the popularity of the gTLD or the loaded meaning of the word, such as .democrat and .gop.

By preemptively registering domains with these gTLDs, clients may avoid the problem of such domains being developed into “gripe sites” potentially protected under the First Amendment.

To facilitate this offensive strategy of tailored, preemptive registrations, ICANN, the organization essentially charged with stewardship of the Internet, established the Trademark Clearinghouse, a centrally organized system that serves to enhance protection of trademarks in the new Internet landscape. By registering their trademarks with the Clearinghouse, brand owners are given “first dibs” on registering their trademarks whenever a new gTLD is scheduled for release.

In addition to streamlining the registration of domains for brand owners, the Clearinghouse also provides critical defensive benefits, such as notifications whenever a third party has registered a domain identical to the brand owner’s trademark. Once notified, a brand owner and their counsel can evaluate the situation and decide if any action, including legal proceedings, is warranted. Crucially, though, it keeps brand owners and their legal counsel informed of potential risks and equips them with the ability to effectively police their trademarks in the new gTLDs.

Some of the various registrars, who own and operate the individual gTLD strings, offer domain-blocking services, or pre-screening authentication services prior to registration, but the majority of registrars generally offer no additional trademark protection or pre-screening before they sell any particular domain. Thus, while there are certainly limitations to what the Trademark Clearinghouse can do, and there has been criticism of its shortcomings compared to what it could have potentially accomplished, it remains the best tool for protecting trademarks.

There are many skeptics who predict that the deluge of new gTLDs will have only minimal impact on how we use, perceive, and conduct business on the Internet. (Ever use a .info website? Few have since its introduction in 2001). But there is no doubt that many of the new gTLDs hold much promise of transformative, widespread application. Whether or not your clients decide to fully embrace and use some of the new gTLDs for their own marketing and branding platforms, they should at least be advised to start considering them in their brand protection efforts.

With about 250 new gTLDs already opened to the public, and new ones constantly entering various intimidatingly named launch phases (sunrise, landrush, general) every week, navigating the new gTLD landscape can be dizzying without the guidance and knowledgeable input of trademark counsel, who can also help develop that tailored domain strategy.

While the reality may be that many – perhaps most – of the new gTLDs will fail to break into mainstream use, fading instead into the cobwebbed corners of the Internet, their potential and their risk should not be ignored. And, due to the conniving nature of cybersquatters, it may simply not be an option for brand owners to wait until the dust settles to reveal which domain strings are the most valuable to their brand.

To avoid the high costs and brand damage that may result from a purely reactive approach of wait-and-see, it seems appropriate to advise clients to consider developing a strategic, proactive approach to brand management and protection in the new gTLD landscape that best meets their particular needs.

Alex P. Garens is an intellectual property associate in the trademark and copyright practice group of Grossman Tucker Perreault & Pfleger in Manchester and represents clients on domain and Internet-related IP issues.

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