Protecting your brand in the new gTLD world

Businesses Beware. We are embarking on a brave new world of generic top level domains (gTLDs).

Currently, your customers and suppliers reach your website through any of about 22 gTLDs, but mostly through the core group, .com, .org or .info, and the applicable country code TLD (ccTLD) such as .fr for France and .jp for Japan. But demand for new TLDs has been high, resulting in a new program that lifts the restrictions, allowing registration of essentially anything as a gTLD if it has not been reserved by the ICM Registry. It is believed that these new TLDs will make it easier for consumers to locate businesses and products and enable companies to better protect their brands from fraudulent activities such as imitations and phishing.

Although the process may be exacting and expensive ($185,000 application fee and $25,000 annually), from January 12, 2012 through April 12, 2012, anyone will be able to propose and apply for gTLDs associated with particular interests, communities or business sectors. New domain names may be a product or company name or even something descriptive such as cities, professions, sports or even .cheese. Approval of the requested gTLD enables the owner to operate its own private second-level domain name (yourname.cheese) registry for businesses that want to be associated with that particular sector, potentially making the hefty fees a good investment in light of the potential profits to be made.

What does this mean for your brand? There will be a For Sale sign on your trademarks because “.yourcompany” – your brand - will be available for purchase as a gTLD on January 12, 2012, subject to objection pursuant to a dispute resolution proceeding through one of ICANN’s designated Dispute Resolution Service Providers.

Businesses can, however, take action now to at least block their trademarks from registration in connection with adult websites. The new .XXX top level domain is designed specifically for the global adult entertainment industry. It clearly identifies websites as containing adult content enabling internet users to avoid viewing pornographic content or block access by their children. Pursuant to a pre-launch procedure specific to .XXX, between September 7, 2011 and October 28, 2011, owners of trademarks registered prior to September 1, 2011 who do not want their brands associated with adult websites may block registration of their brands in the .XXX TLD through selected domain name registrars such as GoDaddy and Network Solutions.

For a one-time fee (about $200-$300), the domain name containing the registered trademark will be permanently blocked from registration in the .XXX TLD without additional or annual fees. You can still protest a registration pursuant to ICANN’s Uniform Domain Name Dispute-Resolution Policy if you miss the pre-launch “Sunrise B” period. For more detailed information see the launch plan.

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