United States: 5 Steps To Protect Your Brands In The New gTLD Regime

Last Updated: December 23 2013
Article by Joshua S. Jarvis

The time is upon us. After years of anticipation, lobbying for delays and more robust trademark protections, and otherwise steeling themselves against the oncoming tide of new, generic top-level domain names (gTLDs), brand owners are faced with the reality of ICANN's far-reaching program: the first new gTLDs have been "delegated" — received final approval from ICANN for use and availability in the domain name system.

These newly-delegated gTLDs include .guru, .clothing, .ventures, .bike, .camera, .equipment, and .gallery, and others are expected to be delegated weekly over the coming year, eventually resulting in hundreds of new top-level domains. The sheer number of available gTLDs seems daunting, but there are several simple steps brand owners can take to manage the process.

1.  Register Your Trademarks in the Trademark Clearinghouse

As we reported in our last post, two trademark rights protection mechanisms — the "sunrise" period and the Trademark Claims service — are available to brand owners during the launch phase.  The sunrise period of each new gTLD launch will allow trademark owners a first shot of securing second-level domain names (domain names directly "to the left of the dot") corresponding to their trademarks.  The trademark claims service will provide limited notifications to trademark owners when domain names corresponding to their marks are registered by others.  Each of these  protections is dependent on the Trademark Clearinghouse, a repository of verified trademark rights.  If trademark owners do not record their marks in the Trademark Clearinghouse, they cannot register second-level domain names during the sunrise periods of newly launched gTLDs, and will not receive notices of third-party domain name registrations corresponding to their trademarks once the "general availability" periods begin.

At a cost of $150 per mark per year, the Trademark Clearinghouse is essentially a required step for trademark protection in the new gTLD regime, and is highly recommended.

2.  Monitor New gTLD Sunrise Launches

ICANN maintains a list of sunrise and Trademark Claims dates for delegated and forthcoming gTLDs here, and the Trademark Clearinghouse maintains a list of sunrise dates here.  We recommend bookmarking these sites and checking once weekly for new updates.  Sunrise periods of at least 30 days are required by ICANN for each new gTLD launch, but most new gTLD registries appear to be opting for 60-day sunrises.  Brand owners that contract with domain name management companies to handle their domain name portfolios should instruct their providers to assist with monitoring sunrise launches and windows.

3.  Register Your Trademark.gTLD Domain Names During Sunrise and Evaluate Defensive Registration Opportunities

The going price for sunrise registrations seems to be about $100-$150 a pop, though this will vary.  During sunrise periods, brand owners can only register the exact trademarks they have recorded with the Trademark Clearinghouse — for instance, armani.clothing, polaroid.camera, or foleyhoag.lawyer, but not armanishirts.clothing, polaroid-film.camera, or foleyhoagIPLaw.lawyer. Companies should develop strategies to determine in which gTLDsthey will seek such direct-match domain name registrations.  In evaluating whether they should purchase a particular domain name, brand owners should consider prioritizing domain names in their particular industry, domain names that they plan to use or which may have some utility in the future, and domain names that have significant potential for abuse by others.

Owners of well-known or famous marks that have a substantial budget for domain names might consider "defensive" registrations (domain names that they don't expect to actually use) in most or all new gTLDs. Certain registry operators such as Donuts Inc. (which applied to operate over 300 gTLDs!) href="http://www.101domain.com/donuts_defensive_registration_for_trademark_owners.htm"target=_blank> offer defensive registration schemes that allow brand owners to cost-effectively obtain true "defensive" (non-functioning) domain name registrations across multiple gTLDs.

4.  Review Trademark Claims Service Notices and Consider Expanded Surveillance

Once the "general availability" period opens up for a new gTLD, the registry must provide the Trademark Claims service for a period of 90 days.  During this time, brand owners who recorded their trademarks in the Trademark Clearinghouse will receive notices when an individual or entity registers a domain in a new gTLD that corresponds to one of their recorded trademarks. Brand owners that receive such notices should review them carefully to determine whether the registration poses an obvious trademark infringement or cybersquatting risk.  If the risk is not apparent at the outset, brand owners should plan to monitor the associated websites periodically to evaluate possible action, including domain name disputes via the Uniform Domain Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension (URS) system.

It is important to understand that the Trademark Claims service will provide notification of only exact-match registrations, and only for 90 days.  For this reason, companies may wish to engage a brand protection service to provide more comprehensive domain name watching on an ongoing basis.

5.  Develop a Comprehensive Domain Name Acquisition and Policing Policy

Once the general availability periods hit in each new gTLD, domain names will be sold on a first-come, first-served basis, and companies should be prepared to register desirable domain names out of the gate.  Further to the strategy developed in connection with registration of exact-match domain names during the various sunrise periods, brand owners should develop or update their overall domain name acquisition and policing programs to take into account the dramatically expanded domain name space.  In most respects, the general strategies will remain the same as they have always been — register domain names that you need, that you might need, and that are likely to be abused.  However, in the new gTLD regime it will be necessary for all but the most well-heeled companies to exercise significant discretion, likely resulting in fewer domain names registered in each gTLD overall

As the domain name space becomes more crowded, and as the value, viability, and popularity of the various new gTLDs becomes more clear, this policy should be reevaluated and revised accordingly.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
In association with
Practice Guides
by Mondaq Advice Centers
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions