Since 2011 ICANN, the organisation responsible for the management of the top-level domain space, has been embarking on a program of expansion to allow for the registration of a vast number of new gTLDs (generic top level domains).

Applications for new gTLDs were accepted from January 2012 and the first gTLDs proceeded to the final stage of the process on 22 October 2013. At the time of publication, there have been 1,930 applications for a variety of gTLDs.

Among the most prolific applicants have been Google, with 101 applications, and Amazon, with 76. By contrast, Microsoft has so far only applied for 11 gTLDs and Yahoo for just two, both relating to Yahoo-owned trade marks (.yahoo and .flickr).

Brand protection
Trade mark owners can register their marks with the Trademark Clearinghouse (“TMCH”) in order to gain protection in relation to gTLD registrations.

Once a mark is registered with the TMCH the trade mark owner will benefit from the ‘sunrise period’ and the ‘claims period’.

The sunrise period is designed to give priority to brand owners to register their own marks as sub-domains. In this period, which must run for at least 30 days, trade mark owners who have registered their marks with the TMCH can apply before the general public to register sub-domains that exactly match their marks.

The claims period runs for at least 90 days after the sunrise period. In this period, the TMCH is required to: (a) send a warning to any party that seeks to register a sub-domain that exactly matches a mark registered with the TMCH; and (b) notify the trade mark owner if the applicant ignores the warning and registers the sub-domain.

In practice, the usefulness of both the sunrise period and the claims period for trade mark owners is limited by the fact that the services only apply to sub-domains identical (but not similar) to marks registered with the TMCH. However, it could still be a useful strategy in some cases.

Brand owners who wish to take action against sub-domains which infringe their rights and are registered under new gTLDs can also turn to the Uniform Rapid Suspension procedure (for suspension of domain names in clear cases of trade mark infringement – see e.g. suspension of ‘.facebook. pw’). This sits alongside the standard domain name dispute policy (UDRP) which many brand owners are already familiar with, and which continues to apply to new gTLDs.

‘Closed’ gTLDs and ‘open’ gTLDs
Until recently, applicants could either choose to apply for gTLDs that are ‘generic’ words as ‘closed’ or ‘open’ domains. A closed application would be for the gTLD’s use solely by the applicant’s business. For example, the owner of a closed gTLD for ‘.cook’ would not allow an unconnected party to use any .cook sub-domains.

By contrast, an open application indicates that the applicant will allow third parties to set up sub-domains and control their content. So, in an open application for .cook, somebody could apply to register and operate a website at ‘learnto.cook’, for example.

The topic of closed gTLDs for generic words generated a significant amount of debate and criticism. It’s clear why these gTLDs have strong opposition – a closed registration of a generic word would allow a company to have a monopoly over that generic word (e.g. cook).

As a result, in July 2013 ICANN temporarily froze closed applications for generic words. It remains to be seen whether ICANN will re-open these applications. It remains possible, though, to apply for a closed ‘.brand’ gTLD registration.

Image of Tristan Russell
Tristan Russell,

Brand owner view: Merck KGaA

Merck applied for a gTLD to communicate the global initiatives of our Merck Community, which are focused on innovation.

Merck is convinced that the new gTLDs offer the great opportunity to use state of the art technologies which underlines Merck’s mission to deliver first class products, treatments and solutions in the business areas of chemical, pharmaceutical and life science.

We expect that especially in our field of business, internet users will benefit from our modern, safe and trustworthy Internet presence clearly designated to the original Merck Community. The new gTLDs support our continuous efforts to fulfil our promise associated with the brand.

Image of Jonas Koelle
Jonas Koelle,
Merck KGaA

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This article is part of the BrandWrites Newsletter for November 2013