Domain registration under the first sets of new generic top level domains (“gTLDs”) has become available to Trademark Clearinghouse (“TMCH”) participants. This important development has been largely unreported; nevertheless, brand owners need to be aware of the opportunities and hazards associated with this process.
As of February 1, there are over 70 gTLDs that are in or have passed through their Sunrise Periods, including .clothing, .bike, .land, and .technology. One of the key benefits to TMCH participants is that they are entitled to register their TMCH-recorded trademarks as second-level domains at least 30 days before the domains become available to the public. For more information about the TMCH and the current domain name expansion, see our previous article: “The Expanding Universe of Domain Names” (The Recorder, July 12, 2013).
Although domain name registration under some new gTLDs has been available for a short while, there is no reliable public information about the number and nature of new registrations. It is not yet clear, for example, whether legitimate brand owners or opportunistic cybersquatters are leading the much-heralded stampede. Indeed, there is no way yet to know whether a stampede is even occurring.
In any case, brand owners participating in this early stage of the gTLD roll out should look out for two potential pitfalls:
First, domain registrars are providing their own expensive and limited “pre-registration” and “early access” programs that mimic the TMCH’s Sunrise Periods. Those programs, however, are offered at a relatively high price. For example, 101Domain.com offers its first-day “early access program” to register new gTLD domains for $11,990. That is roughly 10-times more than a five-year recordation with the TMCH, and it only applies to the single gTLD at issue. For brand owners intending to take advantage of these programs to protect their trademarks, we suggest that you consider whether recording with the TMCH is a better investment.
Second, some third-party TMCH agents are not informing their clients that gTLD Sunrise Periods have opened or when the Sunrise Periods will close. This may be particularly concerning for those brand owners that are working directly with third-party agents and relying on those agents for updates, and it could mean that there are TMCH-participating entities that are not aware that they can cheaply and quickly register domains under these new gTLDs right now. A very real scenario would involve a TMCH-participating company learning about a Sunrise Period too late, and deciding that it must invest an additional $10,000 or more to participate in an “early access program” in order to avoid losing out to an online pirate or unscrupulous competitor.
To help avoid those problems, we are providing here and below a link to the full list of gTLDs sunrise periods and public availability dates. Do not wait until the deadline approaches to take action if any of these gTLDs are of interest to you; your TMCH agent may have a Sunrise Period cutoff several days before the official close date.
ICANN TLD STARTUP INFORMATION – SUNRISE AND CLAIMS PERIODS
Brand owners working directly with TMCH agents should keep a careful watch for upcoming deadlines and try to encourage their TMCH agents to provide timely information about developments. If you have questions or need advice about the TMCH, the new gTLDs, or how they may affect your brand protection strategies, then please contact your primary attorney at Owen, Wickersham & Erickson for more information.