Brand and trademark protection for applicants in the new gTLD program involves both proactively protecting your own brand by applying for a brand TLD, and reactively defending your trademarks against third-party gTLD applications.
Applicants should know about the following mechanisms and strategic considerations:
1. The .Brand TLD Designation
Closed Registry: The primary characteristic is that the registry is restricted. Only the brand owner and its affiliates or licensees are permitted to register second-level domains (e.g., shop.nike). Third-party registrations are prohibited.
Enhanced Security: This provides unprecedented control, allowing the brand owner to implement high-level security protocols (like DNSSEC) across all domains, significantly reducing phishing and counterfeiting risks.
Eligibility: The applied-for string must typically be identical to a registered trademark owned by the Registry Operator.
2. Specification 13
This is a critical addendum to the Base Registry Agreement that grants special exemptions for Brand TLDs.
Exemptions: It provides relief from certain obligations designed for open registries, such as the mandatory requirement to publish contact information for registrants.
Sunrise Deferral: It defers the mandatory Sunrise period (priority registration for trademark holders) for as long as the TLD remains a closed, qualified Brand TLD. This avoids a public launch process.
1. Legal Rights Objection (LRO)
This is a pre-delegation dispute resolution procedure to formally challenge a third-party gTLD application.
Grounds: An objection may be filed if the applied-for gTLD string, or the applicant’s potential use of it, would cause impermissible infringement of the objector's existing trademark.
Procedure: LROs are resolved by an independent panel of experts, primarily administered by the WIPO Arbitration and Mediation Center.
2. Trademark Clearinghouse (TMCH)
The TMCH is the central, global database of verified trademark information and is foundational for protection.
Sunrise Services: All new gTLD registries must offer a Sunrise Period (at least 30 days) where verified trademark holders from the TMCH can register corresponding domain names before public access.
Trademark Claims Service: For at least 90 days after general public registration opens, the registry must use the TMCH to provide notice to both the new domain registrant (warning of the conflict) and the trademark holder (if the registration proceeds).
3. Uniform Rapid Suspension System (URS)
This is a post-delegation dispute mechanism for clear-cut cases of trademark infringement (cybersquatting) in a newly delegated TLD.
Process: URS is a faster and less expensive alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP).
Remedy: The only remedy is the temporary suspension of the infringing domain name, making it suitable for quick relief in obvious cases of abuse.
Applicants should know about the following mechanisms and strategic considerations:
🛡️ Proactive Protection: The Brand TLD (.brand)
Applying for a Brand TLD (a "dotBrand," e.g., .google, .nike) is the highest level of digital control and protection for a trademark owner.1. The .Brand TLD Designation
Closed Registry: The primary characteristic is that the registry is restricted. Only the brand owner and its affiliates or licensees are permitted to register second-level domains (e.g., shop.nike). Third-party registrations are prohibited.
Enhanced Security: This provides unprecedented control, allowing the brand owner to implement high-level security protocols (like DNSSEC) across all domains, significantly reducing phishing and counterfeiting risks.
Eligibility: The applied-for string must typically be identical to a registered trademark owned by the Registry Operator.
2. Specification 13
This is a critical addendum to the Base Registry Agreement that grants special exemptions for Brand TLDs.
Exemptions: It provides relief from certain obligations designed for open registries, such as the mandatory requirement to publish contact information for registrants.
Sunrise Deferral: It defers the mandatory Sunrise period (priority registration for trademark holders) for as long as the TLD remains a closed, qualified Brand TLD. This avoids a public launch process.
⚔️ Defensive Protection: Rights Protection Mechanisms (RPMs)
If you are not applying for your own TLD, you must be prepared to defend your trademarks against other gTLD applications using these tools:1. Legal Rights Objection (LRO)
This is a pre-delegation dispute resolution procedure to formally challenge a third-party gTLD application.
Grounds: An objection may be filed if the applied-for gTLD string, or the applicant’s potential use of it, would cause impermissible infringement of the objector's existing trademark.
Procedure: LROs are resolved by an independent panel of experts, primarily administered by the WIPO Arbitration and Mediation Center.
2. Trademark Clearinghouse (TMCH)
The TMCH is the central, global database of verified trademark information and is foundational for protection.
Sunrise Services: All new gTLD registries must offer a Sunrise Period (at least 30 days) where verified trademark holders from the TMCH can register corresponding domain names before public access.
Trademark Claims Service: For at least 90 days after general public registration opens, the registry must use the TMCH to provide notice to both the new domain registrant (warning of the conflict) and the trademark holder (if the registration proceeds).
3. Uniform Rapid Suspension System (URS)
This is a post-delegation dispute mechanism for clear-cut cases of trademark infringement (cybersquatting) in a newly delegated TLD.
Process: URS is a faster and less expensive alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP).
Remedy: The only remedy is the temporary suspension of the infringing domain name, making it suitable for quick relief in obvious cases of abuse.
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