Time To Re-Evaluate Your TLD Strategy By Sheri Falco, General Counsel, ICM Registry LLC

The Internet Corporation for Assigned Names and Numbers's new top-level domain program resulted in approximately 1,400 new TLDs for consumers and brands; including new domain extensions like dotWine, dotGolf, dotLaw, dotNYC, dotBMW, etc. The intellectual property community significantly influenced the creation of a variety of rights protections programs and policies for trademark owners in ICANN’s new TLD program.

One of the principal results of the intellectual property community’s participation was the creation of the Trademark Clearinghouse. The TMCH is a central repository developed specifically for ICANN’s new gTLD program; it provides rights holders across the globe the ability to protect their trademarks in all new TLDs. Eligibility in the TMCH is limited to active registered trademarks from a national or multinational jurisdiction, as well as to trademarks that are validated by a court order or treaty. The goal of the TMCH is to operate cost-effective services that avoid undue financial or administrative burdens on trademark holders, registrars and registries. To participate in the TMCH, trademark owners or their agents must file their marks and submit TMCH registration fees directly with the Trademark Clearinghouse.

Trademark owners not familiar with ICANN or new TLDs may misunderstand the function, purpose and value of the TMCH. Registering a trademark with the TMCH does not prevent other parties from registering a “confusingly similar” domain name in any of the new TLDs nor does it secure the trademark owners automatic right to obtain the desired name in any of the new TLDs. Registering a trademark with the TMCH is, however, a prerequisite to obtaining certain opportunities within in the new gTLD program.

The two primary benefits available to trademark owners who register with the TMCH are the Trademark Claims Service and the Sunrise Service. As an additional benefit, registering a trademark in the TMCH also validates the trademark in the event the trademark holder wishes to participate in ICANN’s Uniform Rapid Suspension dispute resolution procedure. As further described below, the URS is dispute resolution option available to trademark holders whose marks are infringed in new TLD domain names. Registering a mark with the TMCH streamlines the trademark owner’s pursuit of the potentially infringing domain name through the URS.

Even if a mark owner does not wish to purchase any domain names in any of the new TLDs, there are still advantages to registering the mark with the TMCH. The key advantage is, by registering a mark with the TMCH, the trademark owner receives email notices when another party registers a domain name that matches their mark. In addition, the party buying a domain name in a new TLD also receives notice that a trademark exists on the domain name they seek to purchase, essentially putting the domain name buyer on notice. This is referred to as the Trademark Claims Service.

Another significant rights protection victory resulting from the intellectual property community’s participation in ICANN’s policy-making process is the priority registration period designed specifically for trademarks registered in the TMCH; this priority registration period is referred to as a sunrise period. Each new TLD that launches under this program must make the domain names in their TLD available to the trademark owners registered in the TMCH before making their domain names available to the general public.

To take advantage of a TLD sunrise period, trademark owners must be registered in the TMCH and must also submit a proof-of-use of the mark. (Proof-of-use is not required if the trademark owner simply wishes to receive the notice service described above.) Once the proof-of-use is accepted by the TMCH, the trademark holder is able to participate in all TLD sunrise periods for which its mark is eligible. This opportunity is a TLD by TLD specific opportunity; trademark owners may elect to participate in some sunrise periods and not others.

It goes without saying that these new processes create additional steps that most trademark owners are not used to when it comes to acquiring domain names. As a result, the new gTLD program requires trademark owners to make advanced decisions regarding their online brand management strategy. As further illustrated in the graphs and tables presented in this article, some owners are proactively registering their marks in many new TLDs, others are selectively registering their marks depending on the TLD, and others have opted simply to monitor activity to see what actions, if any, they wish to take.

Given that each TLD charges its own domain name registration fee and that those fees are typically annual registration fees, the assessments trademark owners face about which TLD sunrise periods to participate in and which to ignore have substantial cost implications. If a specific TLD is relevant to a mark’s goods and services, the trademark owner will likely want to ensure that it registers its mark as a domain name in that TLD. Arguably there are some benefits to having websites in TLDs related to a brand's marks, but, even if the trademark owner does not wish to use the domain name as an actual website, it is generally more cost-effective to obtain the domain name during the sunrise period, rather than risk allowing a third party to obtain that domain name and pursuing the infringing name in a dispute resolution procedure.

As of March 2015, there are approximately 35,000 global trademarks registered in the TMCH. However, as the TLD list below illustrates, to date there are only a few thousand marks registered in each of the leading new TLDs.

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Moreover, of the actual marks registered as domain names in the 250 TLDs reviewed, only 27 percent of those marks were registered during the specifically designated “trademark-priority” sunrise period. Most of the domain names that match TMCH marks were registered after a TLD’s sunrise period; it is not clear whether the post-sunrise registrations are the actual marks holders or third parties.

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It is clear, however, that many marks owners have not yet maximized the trademark protections built into the new TLD program. Several factors prevent trademark owners from registering their marks during a TLD’s sunrise period.

  • Higher sunrise pricing

  • Lack of registrar support for sunrise

  • Complexity and dost of the TMCH sunrise registration process

  • Lack of transparency regarding available names in a TLD (e.g. premium names, reserved names, collision lists, etc.)

  • General lack of awareness of the TLD program and launch dates

Most TLDs charge extra fees for domain name registrations during their sunrise periods; these fees are in addition to amounts charged by both the TMCH and sunrise agents. Only recent TLDs, like .porn and .adult, have opted against charging additional sunrise fees.

Another complexity is that brand owners seeking to register marks during a sunrise period often find the domain name is not available because it is reserved or, if it is available, it is offered at a premium price. These complexities, combined with the low volume of transactions during sunrise periods, results in registrars opting not to offer domain registrations during a TLD’s sunrise period. Some of the largest registrars including, GoDaddy and Web.com, do not typically offer sunrise periods.

All of these factors lead to “domain fatigue.” Brand managers feel that it takes too much time, effort and money to figure out how, when, and which TLDs to register their marks in. Even though there are free resources like nTLD Stats and the Domain Check Tool to help navigate new TLD launch and domain name information, many brands have simply given up.

Instead brand managers are taking a wait-and-see approach. Marks owners wait until a domain name is registered by a third party and if the name is in a relevant TLD, or if the name is in a TLD that is detrimental to the brand, only then will the owner pursue the name through ICANN’s dispute resolution process; either the Uniform Domain Name Dispute Resolution Policy or the Uniform Rapid Suspension. Both the UDRP and the URS are more expensive than a typical sunrise registration. The filing fees alone for either a URS or a UDRP are $500 to $3,000, depending on the process, panel size, complexity, etc.

This reactive strategy has inherent risks because neither the URS nor the UDRP are foolproof plans. Even globally recognized brands like Del Monte have recently lost UDRP actions and as a result, are not in control over key domain names. Moreover, while a successful UDRP results in the mark owner obtaining the desired domain name, a successful URS does not yield that same result. A successful URS merely results in the domain name being effectively “suspended” for the duration of its domain registration term; however, once the registration term is over — the name becomes available to the general public and can be acquired by any party. As such, it is the responsibility of the trademark owner to register the domain name once it becomes available again (after the infringing party’s domain name registration term expires). This unsatisfactory result is one of the main reasons that trademark owners have continued to proceed under the UDRP, rather than the URS, for most new TLD disputes.

In any event, neither the UDRP nor the URS ensures that the trademark holder will ultimately obtain the name. In either a UDRP or a URS, the trademark owner must convince the panel that the domain name is confusingly similar to its trademark, that the domain owner has no legitimate interest in the domain name and that the domain name is being used in bad faith. As the Del Monte example reveals, not all uses of a domain name are in bad faith and as such, not all trademark owners obtain their desired domain names, even if they directly match their marks.

However, with more than 15,000 marks registered as domain names in at least one new TLD, clearly some brands are taking a proactive approach. As the table below illustrates, there are at least 11 TLDs containing over than 2,000 globally recognized marks as domain names.


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Moreover, some trademark owners are registering their marks in almost all of the 250 TLDs we reviewed.

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Now that the new TLD program is halfway through its rollout, and with popular new TLDs like dotApp, dotWeb, dotPorn and dotBuy launching this year, trademark owners may want to re-evaluate their strategies to ensure brand consistency throughout TLDs. There is still time to take advantage of the priority registration periods created for trademark owners in the TLDs launching this year.