A question on new gTLD first rights and trademark protection

Any organization will recognize that there will be plenty of opportunities when the new gTLDs launch later this year, but one should also note that there is also massive risk for brands that miss out on registering domains in new TLDs. Here’s a question surrounding first rights in brand registrations and our response to it:

Question: "I already own MyCompanyName.com, so I will have first rights to every new gTLD... right ?



Unless you own the trademark “MyCompanyName” you will stand little chance of being able to register your existing domain string within any new gTLD. The Trademark Clearinghouse (TMCH) will allow trademark holders to validate their marks in an online database that every new TLD Registry will have to connect to.

This will also give every trademark owner the opportunity to apply for their registered mark in the Sunrise phase of each new gTLD.  A brand trademark owner, with the respective validation in the TMCH will have the option to register, where available block or ignore every open gTLD that is delegated.

Every brand owner needs to ask two very simple questions  potentially twenty times a week for the next 12 -18 months.

  • Firstly, how do I want my customers to interact with my organization under any new gTLD?

  • And second, how will I feel and the impact to my business if a competitor uses my trademark or brand on new gTLDs that I didn't register under?

Answer these two questions for every gTLD that is due to come off the ICANN conveyor belt for the next few months, and you will have a  stepping stone to an effective domain strategy in the new internet world.

Written by the NetNames new gTLD team
16 May 2013