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New gTLDs – Brand Protection

Written by Muhammed Poswall on 08 May 2014

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We reported on the introduction of the new generic Top Level Domain names (gTLDs) last year (New gTLDs - An Overview). Previously the only available gTLDs were .com, .org, .info, etc. The opening up for an organisation to have a domain name ending with its own brand name is a proposition every organisation needs to consider in order to protect and promote its intellectual property rights. Each brand owner also needs to consider if it should register a domain name with a more generic ending.

The are several advantages to applying for a new gTLD which include:

  • Increased flexibility
  • Increased control
  • Potential income stream
  • Marketing and brand protection

The big downside is of course the cost of applying and running your gTLD.

Other gTLDs which have been launched include .guru, .coffee and .berlin. Currently .guru is leading the pack with approximately 55,000 registrations followed by .berlin which has 47,362 registrations (figures obtained from ntldstats.com/ltd). The sunrise period for .properties has just been launched and if you are a company which is involved in the real estate business you may want to consider registering a domain name.

The worry for brand owners is the cost of having to pay for new gTLDs in order to protect their brands and to protect against new domain name infringements. In order to combat this, new brand protection measures have been put in place by ICANN, this includes:

  • a Trade Mark Clearing House which allows brand owners to deposit all information regarding the trade mark with the clearing house. They can then rely on this information when new gTLDs are launched and provided evidence of the use of the mark is also filed with the clearing house, the trade mark owner can receive notifications of any third party applications to register a domain name identical to the trade mark in any of the new gTLDs.
  • There will also be a sunrise period for the launch of all new gTLDs.

Brand owners will need to be wary of the new gTLDs being launched and will need to put a strategy in place to ensure adequate protection.

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