The new gTLDs and the Trademark Clearinghouse: four tips for brand owners

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The imminent launch of more than 1,400 new generic top-level domains (gTLDs) poses a major challenge to brand owners seeking to enforce and maintain control over the way their key trademarks appear in domain names. The domain ender ‘.com’ is the most widely used of the current gTLDs, but ‘.net’, ‘.org’ and ‘.edu’ gTLDs are also prevalent. All of the current gTLDs are managed by the Internet Corporation for Assigned Names and Numbers (ICANN). On 20 June 2011, ICANN approved a plan to expand the universe of gTLDs to include virtually any string of characters, including trademark words (for example, ‘.docs’, ‘.rocks’, ‘.world’, ‘.pepsi’, and so on).

To help brand owners exercise greater control over use of their trademarks, ICANN has developed the Trademark Clearinghouse (TMCH), which gives brand owners the first opportunity to obtain domain names incorporating their trademarks upon the launch of a new gTLD. Brand owners registered with the TMCH will receive notice when a third party registers a domain name incorporating their trademark. The third-party registrant is also notified of the brand owner’s rights in the mark.

This expansion of the list of available gTLDs, and its implications for brand owners, have been hot topics within the legal and branding communities since ICANN approved the expansion programme. In June 2012, ICANN announced 1,930 applications had been submitted for 1,409 unique gTLDs…

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