When Should Businesses Consider TM Protections in New gTLDs? Now!

Steve Levy —  January 30, 2014 — 1 Comment

Is it too early or precisely the right time for a conversation about new generic top-level domains (gTLDs) and the various ways brands can protect themselves against cybersquatting?  This was the main question nearly 20 participants had at a roundtable in Philadelphia sponsored by the International Trademark Association entitled “gTLDs: Protecting Your Brand.”

The discussion group, lead by yours truly, was made up of law firm attorneys, in-house counsel, representatives from service providers CCH Corsearch, and mega-registry Donuts.

Many in the room were there “to learn as much as I can about this subject” reflecting the fact that it’s still early in the rollout of new TLDs, and most brand owners have registered no new second-level domains let alone filed claims under the Uniform Rapid Suspension system (URS), the Post-Delegation Dispute Resolution Procedure (PDDRP) or the Registry Restrictions Dispute Resolution Procedure (RRDRP) which have been added to the arsenal of brand owners that, until now, had been limited to the Uniform Dispute Resolution Policy (UDRP).

Seven new gTLDs are now open to the public for registration of websites, and many more will become available to the public in the coming months so I expect there will be a tremendous increase in demand for expertise on these issues.

Many roundtable attendees were familiar with the Trademark Clearinghouse (TMCH) – the organization put in place by the Internet Corporation for Assigned Names and Numbers (ICANN) to help brands protect their marks. But participants expressed concerns about the vague instructions from, and lack of communication by the TMCH.

Donuts’ Domains Protected Marks List (DPML), a blanket protection being offered across its 250+ TLDs, was of particular interest to attendees.  For less than the price of a single UDRP complaint, brand owners can block others from registering domains identical to, or that contain their trademark.  Even for this brand-friendly program, however, it seems likely that there will be kinks to work out the system gains in popularity.

Although clients may not be ready to ask for advanced gTLD services, now is the perfect time for trademark professionals to scale the learning curve so that once these domains start appearing on billboards, buses, Super Bowl® commercials, and web ads, these professionals can avoid last-minute scrambles and instead be fully prepared to take immediate steps to protect valuable brand assets.

Trackbacks and Pingbacks:

  1. State of the Net for the Week of February 3 | Domain Name Strategy - January 31, 2014

    […] The International Trademark Association (INTA) held a series of roundtables from January 21 – January 31, covering the gTLD registration process and how it can be used to protect brands online. FairWinds’ Counsel Steve Levy led a January 29 roundtable in Philadelphia on new generic top-level domains (gTLD); read more about his panel here. […]

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