The ever expanding list of available generic top-level internet domains (gTLDs) is about to get longer. Popular gTLDs include the familiar .com, .net and .org, but the total list has now grown to 22, including .info, .biz, and .pro. In addition, the proliferation of country-code top-level domains (ccTLDs) such as .co, .eu, and .uk has expanded beyond 300, leaving trademark holders with a seemingly overwhelming list of potential top-level domains to consider in terms of defensive registration or monitoring.
To add to the list, ICANN (the International Corporation for Assigned Names and Numbers) has begun accepting applications from private entities for new gTLDs. There are very few restrictions on what may comprise a new gTLD. This means that private entities will likely own and control gTLDs that consist of their own trademarks, such as .ford or .coke, and generic words that describe an industry, such as .car or .bank. Each applicant must meet certain technical requirements, file an application by April 12, 2012, and pay an initial fee of $185,000. There is no opportunity for trademark owners to exclude their marks from the list of potential new gTLDs. However, after the applications for gTLDs have been published, trademark owners will have the opportunity to object to the registration of a particular gTLD.
Although the prospect of proposing and hosting a new gTLD will not be a viable alternative for the vast majority of trademark holders, each new gTLD that is approved and ultimately adopted will add to the list of potentially infringing and problematic domains that must either be purchased and maintained as a preventative measure or monitored for potentially infringing uses.
Accordingly, it is increasingly important to have in place a trademark enforcement and domain name management policy that addresses the defensive registration of strategic gTLDs, and the appropriate monitoring of others. We generally recommend that clients consider the registration of key trademarks and trade names with the following TLDs: (i) the most popular generic top-level domains (.com, .net, .org, and .info); (ii) country-code top-level domains for any countries where significant business is currently conducted, or which are of particular strategic importance; and (iii) the most popular country-code top-level domains. The following is a recent "top ten" listing of ccTLDs based on number of registrations:
- .de (Germany)
- .uk (United Kingdom)
- .nl (Netherlands)
- .eu (European Union)
- .cn (China)
- .ru ( Russia)
- .br (Brazil)
- .ar (Argentina)
- .it (Italy)
- .pl (Poland)
Defensive registration is just one component of a comprehensive trademark enforcement and domain name management policy.
Elizabeth Tassi contributed to this post.