Home > Insights > Update on new generic top level domain names (gTLDs)
28 April, 2014

There have been several developments since our previous bulletins on new gTLDs (found here and here). In particular, a number of the new extensions are now available for registration as domain names.

The new gTLDs significantly increase the number of domain name extensions available, opening up the possibility to register domain names with extensions such as .london, .cooking and .technology. In total there will be over 1,300 new gTLDs that are gradually being released over the next few years.

There are three ways to obtain a new gTLD during phases known as sunrise, land rush and general availability. If you want to register a domain name ending in a new gTLD during the first available period, known as the sunrise period, you must have prior trade mark rights that are recorded with the Trade Marks Clearing House (TMCH). After the sunrise phase domain names may be sold during a land rush period. It is down to the relevant Registrar to determine how this period will be run but if a number of parties apply for the same domain name they may be sold to the highest bidder. Finally there is general availability when domain names can be registered by all.

Prior to the domain names going on sale parties can stake their interest in certain domain names by pre-registering. A large number of pre-registrations have already been requested. This does not mean that the domain names will necessarily end up in the hands of those that have recorded their interest, for example a rights holder may still purchase them during the sunrise period. However, after the sunrise period it is effectively a free for all and domain names could end up in undesirable hands.

Whilst the new gTLDs open up the possibility of more personalised and relevant domain names, they do increase the risk of domain name abuse. If brand owners do not protect and police their intellectual property they could find third parties registering domain names ending with the new gTLDs that conflict with their rights. Brand owners should therefore give serious consideration to recording their trade mark rights with the TMCH to ensure that they are both notified of conflicting domain names registered during the initial notification period and to give them the first opportunity to register a domain name ending in a new gTLD of interest.

There are also other options available for protecting your rights such as domain name watches and the Donuts Protected Marks List. Donuts Inc has applied to run the registries for approximately 300 new gTLDs, thereby acting as the Registrar for a vast number of potential new domain names. Their Protected Marks List allows brand owners to prevent registration of their trade marks in domain names ending in the new gTLDs that are run by Donuts. Further information on the Donuts Protected Marks List can be found in an earlier edition of BoultBites.TM.

If you need further information please speak to Charlotte Duly or your usual advisor.