The Internet domain name space continues to expand, with over 100 new generic top-level domains (gTLDs) added to the Internet’s root zone, and more to come in each following week. Overall, the new gTLD expansion will result in an increase in top-level domains from a mere 22 to a total of 1400 over the next few years. The expansion creates unique opportunities but also raises new enforcement challenges for brand owners.

According to the president of ICANN’s Global Domains Divison, Akram Atallah, the increase in the availability of online name space translates to “expanded consumer choice and industry competition”.  While the new gTLD program certainly presents an opportunity for brand owners to further utilize the Internet, it also raises new enforcement challenges. Brand owners are now able to register their trademarks on domain registries targetted specifically to their industries, (i.e., .law, .food, .shop) but they will also be required to monitor 1400 additional registries to prevent any unauthorized use of those same marks.

As covered previously in our blog, ICANN created a new enforcement mechanism through the Trademark Clearinghouse (TMCH) to address some of these new concerns.

On the one front, the TMCH allows a user to register during a “sunrise” registration period prior to the launch of each new gTLD. This early registration process allows a brand owner to register for a new domain identiical to their trademark with a new gTLD, and thereby prevents a third party from doing so. To take advantage of early registration, brand owners must provide proof of use of the registered mark.

On the second front and following the early registration period, the TMCH allows for notification of a third party registration. For instance, when a third party registers a domain that matches a trademark registration on file with the TMCH, the third party will be notified as to the potential conflict. If the third party chooses to proceed anyway, the trademark owner will be notified and then can take appropriate action. To take advantage of this service, brand owners can enter registered trademarks into the TMCH (without proof of use), and be notified for up to 50 domain names.

New gTLDs will continue to roll out on a week-by-week basis.  Accordingly, it is recommended to submit your trademarks with the TMCH as soon as possible to take full advantage of the early registration and notification services.

For more information on the TMCH —