The number of top-level domains, which are currently a handful such as .com, .net, .org, .gov, .mil, .edu, .mobi, .jobs, .xxx will be expanded to well over 1,000, such as .sport, .eco, .berlin, .web, .art, .android, .auto, .cloud, .film, .movie, .wedding and many others.
The application process has been under way since 2012 and ICANN is still processing over 2,000 applications for new top-level domains (gTLDs).
In the past, for certain new domains, such as .eu, .asia, and .xxx, there has been a sunrise period to give trademark owners first crack at registering their brands before the new domain is open to the general public. Each sunrise had its own rules, forms and paperwork.
In order to streamline the new gTLD process, ICANN is setting up a central trademark clearinghouse (TMCH) so that one set of paperwork can be centrally submitted for all sunrises. While there are still some kinks to be worked out, the TMCH is set to go live on March 26, 2013. Deloitte will be the validator of trademark and IBM will operate the TMCH.
The TMCH will also facilitate trademarks claims processes, which is a new rights protection mechanism under the new gTLD program. The trademark owner will be notified of any new domain registrations which exactly match its marks in the database. This is important because for domains that are restricted, the trademark owner may not be able to qualify to register during the sunrise, but will still want to know of potentially infringing registrations.
Note that the TMCH does not prevent others from registering your mark unless you have actually purchased the mark during a sunrise period. Nevertheless, it reflects a compromise between ICANN and trademark owners and is the best defense against the onslaught of hundreds of new domains.
Venable is prepared to assist clients to navigate through determining which brands to register, setting a budget, and handling the registration process through our domain registration partner. Please contact Janet Satterthwaite, partner in the Trademark Group and head of the Domain Names and Cyberpiracy practice, jfsatterthwaite@Venable.com, 202.344.4974, directly or through your usual Venable contact.