By: Philip Nulud, Esq.
gTLDs—domain names ending in a “generic” term such as .fashion or .style instead of the current .com, .net, .org, etc.—have been in the news for quite a while. Now, it appears that the very first batch of gTLDs will start to roll out sometime after April 23, 2013. As a brand owner, that means you can wait, right? No. You should prepare yourself now.
The gTLDs that have been applied for have already been published. The applied for gTLDs contain famous brands such as Bentley, Canon, Delta, NBA, etc. They also contain generic terms such Law, Store, Style, Sucks, etc. The comprehensive list may be found here: https://gtldresult.icann.org/application-result/applicationstatus. If you have not yet filed your objections to the gTLDs, then your opportunity has passed. However, in most instances, brand owners do not want to go through the lengthy and costly process of opposing any of the new gTLDs, but rather would wait to see whether their marks will be infringed by a confusingly similar domain name utilizing a new gTLD.
The previous process to obtain or take down a domain name that infringes upon one’s trademark was through a Uniform Dispute Resolution Policy (UDRP) complaint. The official fee for a UDRP Proceeding starts at $1,300 and can go up substantially depending upon how many domain names are at issue and how many panelists are needed to decide the matter. The UDRP process takes approximately two months to complete.
With domains under new gTLDs, there will be a new process, a “fast-track” of sorts, called the Uniform Rapid Suspension (URS). Under the new URS process, the official fees are lowered substantially and the timeframe moves to approximately 14 days. In order to file a URS, the complainant must have a valid trademark registration that is currently in use. While the URS will be only available to domains under the gTLD program, this will be a welcome development for brand owners who are trying to enforce their trademark rights online. Brand owners and businesses are encouraged to file trademark applications in order to not only obtain protection for their goods and services, but also to enable them to obtain protection online.