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Brand New GTLDs are almost here – What they are and how to get ready

Monday 5 August 2013

LONDON, PARIS and AMSTERDAM are not just cities in the real world, they are among the 1,930 generic Top Level Domain (gTLD) names seeking online territory from the domain name authority, ICANN. Accompanying them are applications from various parties for generic words like “.cars”, “.clothing”, “.movie” and “.finance”, as well as for brands such as “.Gucci” and “.Nokia”. These labels will soon be appearing at the end of a domain name, alongside familiar endings like “.com” or “.co.uk”.

Common words and Geographic names

The owner of a gTLD for a common word like “shop”, “cleaning”, “dentist”, or a geographic name like “London”, will have exclusive control of who gets a domain name with this ending. For example, if John wants to own a website like “www.johns.shop” he would have to obtain the domain from the owner of the “.shop” gTLD. The more generic the gTLD, the greater the pool of businesses that might want to use it and because the internet is global, the potential market is huge.

Brands

Big brand owners are also taking the opportunity file applications for “dot brands” i.e. to have their brand appear at the end of the domain name instead of ".com" or ".co.uk". It is not just another marketing tool for them but could be an important weapon in the fight against counterfeit goods. For example, Chanel has applied for “.chanel” and if successful will be able to determine who gets to use it, and under what terms. Potentially, everyone wins:

  • the customer is reassured that the products bought from the website are genuine,
  • the brand owner can enjoy revenue from exploiting its brand in this new way; and
  • the authorised retailer will be protected from competition from counterfeiters

Safeguarding

The impact of the rapid development of the internet from a “dot com” or a “dot.co.uk” to a “dot anything” universe could be colossal. The advantages to businesses are obvious where the desired domain name can be secured but likewise, danger can arise if a third party applies for a domain name that incorporates another's trade mark with a new gTLD ending. Not all businesses are in the position of being able to afford to establish the technical Registry facilities to enable them to acquire their own “dot brand”. Thankfully, there are safeguards, such as the Trademark Clearinghouse (TMCH) and suspension service (the URS).

The Trademark Clearinghouse (TMCH) is a global repository in the “Internet world” for existing trade marks. During the early operation of a new gTLD, the TMCH will alert those trade mark holders who have logged their rights with the TMCH of any domain name that includes their trade mark, thus giving them the opportunity to object. Lodging a trade mark with the TMCH also enables trade mark owners to jump the queue for domain name registration which have the new GTLD endings. The TMCH opened for business earlier this year.

The Uniform Rapid Suspension (URS) offers a practical, swift and relatively inexpensive remedy for trade mark holders in clear-cut cases of infringement by suspending the domain name from use.

Strategy

With some careful planning, the new gTLDs could open up more opportunities for business in the global online marketplace but unless you have a strategy in place they could be very detrimental to your brands. The following steps are therefore recommended to protect your online presence

STEP 1: Contact your trade mark advisor as soon as possible for a portfolio review to identify all important trade marks.

STEP 2: Deposit important trade marks with the TMCH to stay informed of domain names that could infringe your rights.

STEP 3: Pursue action against infringers, including making full and efficient use of the URS.

It is vital that businesses use the period before the new gTLDs are up and running to get ready either to take full advantage of the new system, or to ensure they are not left behind, when the new gTLDs go live in Autumn 2013.

For further information, contact your usual trade mark advisor at Appleyard Lees, or speak to a member of the Trade Mark team at Appleyard Lees, headed by David Moy:

Note of caution: scammers will likely be very active once the gTLDs are up and running. We are predicting a flurry of unsolicited notifications to the effect that a third party is trying to register your trade mark as a domain name. If you are concerned in any case, please be in touch with your trade mark advisor here at Appleyard Lees.

For the list of gTLDs, click this link New generic Top Level Domain Names.

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