Take Cover: Protecting a Brand in the New Era of Generic Top-Level Domains
The rollout of new generic Top-Level Domains (gTLDs) is now well underway, and approximately 300 new gTLD strings have become available. A full, up to date list of gTLD strings can be found on ICANN’s web site. Some notable additions include: .shoes, .clothing, .organic, .global, .software, .market, .space, .autos, .luxe, .discount, .cheap, .exchange, .capital, .webcam, .trade, .bid, .bar, .club, .pics, .buzz, .menu and .cheap.
With the rapid expansion of available domains, trademark holders need to decide how to balance proactive and reactive strategies to protect their brands online. As we discussed in a previous blog post, proactive strategies could include registering trademarks with ICANN’s Trademark Clearinghouse (TMCH) and then registering second level domain names within the new gTLDs to keep those names from being used by cybersquatters and competitors. Alternatively, a reactive strategy could involve watching for gTLD abuse and then using the Uniform Rapid Suspension service or the courts to address the most harmful cases. Recently, however, five main players have emerged as the major owners and/or guardians of gTLDs, each offering a different package of rights protection mechanisms.
Perhaps the most influential of the gTLD giants, Donuts currently controls 139 gTLDs. Notably, Donuts has pioneered the recent trend of offering Domains Protected Marks List (DPML) protection to trademark owners who have registered their mark with the TMCH. In short, Donuts allows trademark owners to block the registration of domain names under any of Donuts’s gTLDs if those domain names comprise or contain an exact match of the trademark. The cost of a blocking request is significantly lower than defensively registering the same domain name under each gTLD. The initial blocking period ranges from 5 to 10 years with an option to renew annually in 1 to 10 year increments. Additionally, Donuts has adopted Architelos’s NameSentry anti-abuse technology to reduce malicious use of gTLDs. The DPML system does not apply retroactively, however, so retailers wishing to take advantage of the system’s protections would be wise to register sooner rather than later. For a full list of gTLDs controlled by Donuts, visit its site.
Rightside Registry is almost identical to Donuts in its protective mechanisms, employing a DPML for exact matches and strings containing an exact match of trademarks registered with ICANN’s TMCH and excluding some premium domain names. Like Donuts, Rightside also recently adopted NameSentry. A full list of Rightside’s gTLD portfolio can be found here.
Minds + Machines
Minds + Machines takes a similar approach to Rightside and Donuts by providing a blocking system called Minds + Machines Protected Marks List (MPML). Unlike its two competitors, however, MPML allows blocking for higher priced premium domain names. Additionally, MPML is cheaper than both Rightside’s and Donuts’s DPML. Like DPML, MPML applies to exact TMCH matches and variations. It is likely that Minds + Machines will be implementing NameSentry as well. For a full list of Minds + Machines’s gTLD portfolio, visit its site.
Famous Four Media
In contrast to registries employing DPML-type blocking systems and NameSentry, Famous Four Media (FFM) has focused on engaging industry stakeholders and facilitating reports of abuse. To this end, FFM has created Governance Councils for its individual gTLDs where participating industry stakeholders protect their interests by monitoring abuse and recommending best practices for that gTLD. Governance Councils will be responsible for collaborating with relevant international organizations in implementing abuse monitoring and prevention systems best suited for individual gTLDs. Additionally, FFM Governance Councils have implemented Abuse Prevention and Mitigation (APM) Seal reporting systems; APM web sites provide detailed guidance for reporting abuse. Although FFM registries do not enable individual retailers to preemptively protect themselves from cybersquatting like DPML-type blocking does, APM Seals will presumably facilitate active reporting of abusive practices. A complete listing of active governance councils can be found here, and FFM’s gTLD portfolio may be found here.
Uniregistry seems to offer the most limited protection of the five main gTLD players, relying primarily on abuse reporting through its web site. Domain owners would be required to independently police for gTLD abuse and proactively report that abuse to Uniregistry. For a complete listing of Uniregistry’s gTLDs, visit its site.
So long as registries take different approaches to gTLD protection and management, retailers and other brand owners should familiarize themselves with the different defensive measures offered by each registry in order to make the most cost-effective decisions to protect their brands online. To this end, a few caveats should be considered when planning brand management under the new gTLD system. First, the DPML systems offered by Donuts, Rightside Registry, and Minds+Machines will not protect against typosquatting. For example, if you registered the trademark “examples” with the TMCH, DPML systems would not protect against the registration of “xamples.” Second, DPML systems may not be enforceable by ICANN unless the registry has locked them in as a Public Interest Commitment (PIC) for that specific gTLD application. Donuts, for its part, has included such a PIC in each of its gTLD applications, but brand owners should still check for PICs with the registry in question before relying on a DPML system. Finally, brand owners should be aware of registry systems such as FFM and Uniregistry that may require them to take a more active role in policing their brand under certain gTLDs.
To summarize, brand owners should consider the following steps as they develop their marketing strategy: (1) register key trademarks with the TMCH (which generally requires registration with a trademark authority such as the U.S. Patent and Trademark Office) to take advantage of sunrise periods and DPML/MPML blocking systems; (2) monitor the list of new gTLDs as they become available and take advantage of sunrise or land rush periods to register domain names of particular value; (3) register key trademarks with DPML/MPML lists; and (4) monitor steps taken by brand-relevant gTLD governance councils.