New gTLD Trademarks – Rights Protection Mechanisms Intro

Practical Steps To Protect Your Trademark

An Introductory Guide to New Generic Top Level Domains (gTLDs)

The Trademark Clearinghouse is Open for Registration HERE

OK, so gTL-what?

Don’t panic if you don’t recognise the term, you see these all the time. Generic Top Level Domains or gTLDs are the bit of the website address that comes at the end. Common gTLDs are .com, .org and .biz.

So what’s the story?

When non-profit organisation ICANN was founded back in 1998 to be the coordinator of the Internet’s address system, one of its founding principles was to create competition in the domain name marketplace. In June 2008 the organisation adopted a policy to expand the number of Generic Top Level Domains or gTLDs from the 22 we are currently familiar with.

For a fee of $185K, it would be possible for governments, organisations, domain name companies and other companies to operate their own gTLD (e.g. .ebay .amazon .fda etc.) The application window was open for 90 days at the beginning of 2012. In this article we take a look at what’s changed and what you can do to protect your trademark in light of these changes.

The threat:

New gTLDs open up a new raft of possibilities for second level domains (the bit before the .com/.org etc); just because you own yourbrand.com, yourbrand.org etc. what’s to stop others from registering your brand on one of the new gTLDs? Yourbrand.dog, yourbrand.drink, yourbrand.dynamite, they’re all possible because of these changes.

Many smaller boutique brands will baulk at the fee required to own their own gTLD and face the painful differential between the attributed value of their brand or trademark and the reality of how cash rich the business actually is. In addition, many will have been unaware of the possibility of obtaining their own gTLD or choose not to apply for a different reason.

This leaves the door open for other companies to apply for a Generic Top Level Domain that is related to or identical to your brand or trademark, thereby benefitting financially from your brand value. So what do you do if another company has applied for a gTLD that you perceive as infringing your trademark or brand?

Next we’ll explore some of the most effective RPMs (that’s Rights Protection Mechanisms) provided by ICANN and its partners to help you protect your trademark, both at the gTLD and the second level domain.