While companies have traditionally been limited to Internet extensions such as .com, .net or .org, the international body responsible for regulating the Internet, ICANN, is now allowing entities to operate generic top-level domains (gTLD) of their own choosing. ICANN received nearly 2,000 applications for the new domains, and projects that more than 1,000 will be approved.
While new gTLDs offer a great opportunity for New York and New Jersey businesses to further market their brands, they may also lead to a dramatic increase in cybersquatters, entities that seek to turn profits by hijacking the trademarks and domain names of well-known companies. Thankfully, there are at least two preemptive steps that businesses can take now.
First, businesses should register all of their trademarks with ICANN’s Trademark Clearinghouse (TMCH), the new trademark database and alert system created to monitor the new gTLDs. The cost per mark is $150.
Once you register, your company will receive two important benefits. Under the “sunrise period” for new gTLDs, trademark owners are given the first opportunity to register one of the new domains using their marks. You will also be alerted if a third party registers a new gTLD for an identical trademark within a 60-day Trademark Claims period following the 30-day Sunrise Registration.
It is important to note that the TMCH can only protect against domain names that match your trademark exactly, i.e., it does not cover misspellings or variations of your mark. Therefore, companies should also consider expanding their surveillance for copycat websites.
Second, if your budget allows, businesses may also want to consider “defensive” registrations. Registering several new gTLDs can become expensive, particularly if you don’t plan to actually use them, but it is the best way to help ensure that another company does not capitalize on your trademark.
Since the rollout of the new gTLDs is staggered, businesses will need to monitor release dates carefully. As soon as the 30-day Sunrise Registration opens, you should be prepared to file your application.
If you have any questions about the new gTLDs or would like to discuss your company’s trademark strategy, please contact me, Fernando M. Pinguelo, or the Scarinci Hollenbeck attorney with whom you work.
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