So far, this month, 23 new generic Top-Level Domains (gTLDs) have been delegated (they now appear in the root zone of the Domain Name System). That’s 113 so far this year, with many more expected to follow. Among these exchanges are:
| .email .agency .gift .photo | .tools .properties .events .industries |
The fact that these gTLDs have been delegated does not mean that they are immediately available for people to go and register domains with these extensions.
There is a “Sunrise” period during which trademark owners can register domains before they become available to the general public. This sunrise period varies depending upon the registry operator, but must be at least 30 days.
Thus, trademark owners have the first opportunity to register their trademarked terms with the new extensions…Kodak.photo or DeWalt.tools, for example.
But, does that mean that the only way for a trademark owner to protect its brand is to buy every conceivable domain extension for their trademark?
Fortunately, no. After the sunrise period, the registry owner must hold a Trademark Claims period. If someone attempts to register a second-level domain name using a trademarked term during this period, the registrant will be sent a notice that they may be infringing a protected trademark. If the registrant ignores this warning, the owner of the trademark will receive notice of the intended registration so they can take appropriate action to protect their brand.
There is a “Sunrise” period during which trademark owners can register domains before they become available to the general public. This sunrise period varies depending upon the registry operator, but must be at least 30 days.
Thus, trademark owners have the first opportunity to register their trademarked terms with the new extensions…Kodak.photo or DeWalt.tools, for example.
But, does that mean that the only way for a trademark owner to protect its brand is to buy every conceivable domain extension for their trademark?
Fortunately, no. After the sunrise period, the registry owner must hold a Trademark Claims period. If someone attempts to register a second-level domain name using a trademarked term during this period, the registrant will be sent a notice that they may be infringing a protected trademark. If the registrant ignores this warning, the owner of the trademark will receive notice of the intended registration so they can take appropriate action to protect their brand.
As a trademark owner, what should I do?
In order to take advantage of the Sunrise Period to protect your marks, you must register the marks in ICANN’s Trademark Clearinghouse (TMCH). Once the ownership in the mark is verified, the TMCH will create an SMD file, which allows the trademark owner to access the sunrise period for every new gTLD.
Registration is also a required in order to enable the two notices under the Trademark Claims period.
Contact Us today to so we can help you register your marks in the TMCH, evaluate your current domain name extensions, identify potentially valuable new extensions, and respond to potential registrants of your marks with the newly available extensions.
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