gTLD Sunrise Periods Now Open: April 2016

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods.  Please contact us or see our December 2013 newsletter for information as to what the Sunrise Period is, and how to become eligible to register a domain name under one of the new gTLDs during this period.

As of April 29, 2016, ICANN lists Sunrise periods as open for the following new gTLDs:

.homes .vip
.auto .salon
.group .store
.gmbh .ltd
.promo .tube
.stream .med
.try .redumbrella
.travelersinsurance .stcgroup
.viva .stc

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period.  We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information – as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs (a full list can be found here) to identify those that are of interest.

© 2016 Sterne Kessler

February 2016 – gTLD Sunrise Periods Now Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods.

As of December 31, Sunrise periods are open for the following new gTLDs:

  • .YACHTS
  • .BOATS
  • .xn--tckwe (.コム – Japanese for “.com”)
  • .HOTELES
  • .BET
  • .BIBLE
  • .barcelona
  • .PET
  • .istanbul
  • .ist

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period. We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information – as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs to identify those that are of interest.

© 2016 Sterne Kessler

Year End 2015 Update – gTLD Sunrise Periods Now Open

New generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods. As of the date of this newsletter, Sunrise periods are open for the following new gTLDs:

.OFFICE

.feedback

.family

.auto

.cars

.car

.lasalle

.cloud

.wine

.vin

.theatre

.SECURITY

.PROTECTION

.xn--tckwe (.コム – Japanese for “com”)

.YACHTS

.BOATS

.HOTELES

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period. We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information, as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs to identify those that are of interest.

© 2015 Sterne Kessler

October 2015 – gTLD Sunrise Periods Now Open

The first new generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods.

As of the date of this post, Sunrise periods are open for the following new gTLDs:

.pohl

.allfinanz

.trading

.spreadbetting

.cfd

.swiss

.xn--45q11c (八卦 for “gossip” in Chinese)

.forex

.broker

.earth

.gdn

.kyoto

.feedback

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period. We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information – as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs (a full list can be found here) to identify those that are of interest.

© 2015 Sterne Kessler

Unprecedented Move: Vox Populi Extends Sunrise Deadline for “.sucks” Domain Registration

In a move that is being interpreted as possible overreaching, Vox Populi, operator of the .sucks domain name, extended the period for registering .sucks during the “sunrise period” without notice. The new deadline to register the .sucks domain name is June 19. Not only is it $2,000 or more to register each .sucks domain name, there is also an annual renewal fee of $2,000.

There is online speculation that Vox’s extension is motivated by a relatively large surge in last minute registrations before the original deadline of May 29. This might indicate that Vox is extending the sunrise period for the purpose of taking additional profits from the registration of this already high priced gTLD.

What is a trademark owner to do?

  • Some businesses are defensively registering .sucks then “parking” the domain name to prevent others from using it.

  • Other trademark owners plan to proactively “own” .sucks as a way to receive and curate criticism. This is seen as a way to allow consumers to vet issues and allow companies to manage legitimate issues.

  • Some trademark owners have decided to not register the domain name.

The decision that is right for individual businesses should take into account a variety of factors uniquely associated with the business and its anticipated future use of the Internet for communicating criticism about goods and/or services.

Vox is promoting the registration of this domain name as being consumer friendly providing a “voice” for the people. Vox retained Ralph Nader and Dr. Martin Luther King (via vintage film clip) as two of their celebrity spokes people to promote .sucks as a “protest word.”

There has been significant controversy regarding the launch of the new domain name .sucks. Foremost is Vox’s pricing strategy. Vox Populi (Voice of the People) is offering the domain name to trademark owners for $2,000 for each registration during the “sunrise period.” The sunrise period is an initial brief period of time, usually about two months, during which a trademark owner has priority to register their trademark with the new gTLD. As an example: “chicagocubs.sucks” could be registered by the Chicago Cubs as the trademark owner during the sunrise period for $2,000. Most new domain names (.coffee, .wedding, .football, .media, etc.) can be registered during their sunrise period for $100 – $200. However, if the Cubs decide to not register .sucks, a party qualifying for a “Consumer Advocate Subsidized” registration (as determined by Vox) can register “chicagocubs.sucks” after the sunrise period for only $9.95.

Many trademark owners are questioning whether Vox’s pricing strategy is an impermissible windfall or free speech. Some parties have already brought this matter to the U.S. Federal Trade Commission (FTC) and the Competition Bureau Canada for consideration. Although no final decision has been reached by either agency, FTC Chairwoman Edith Ramirez provided a preliminary response pointedly reminding Internet Corporation for Assigned Names and Numbers (ICANN), acting on behalf of the concerned parties, that the FTC weighed in on these and similar issues years ago prior to the launch of the new gTLD program. While Chairwoman Ramirez cannot comment on the existence of pending investigations she left the door open for monitoring the actions of registries and taking action in appropriate cases “if we have reason to believe an entity has engaged in deceptive or unfair practices in violation of [the] consumer protection authority.” Chairwoman Ramirez urged ICANN to address these issues internally since the dramatic growth of gTLDs brought on by ICANN’s program cannot be “feasibly addressed on a case-by-case basis” by the FTC.

Over the first 30 years of the publically accessible Internet approximately 220 gTLDs, including country codes were made available. Between 2011 and 2014 ICANN initiated a program to create new gTLDs. The stated goal of these new gTLDs was to be inclusive of new interest groups, non-Latin script languages and to anticipate the expansion of the Internet. This initiative was wildly successful with 1,930 applications being received by ICANN. After significant review of the applications approximately 1,370 new gTLDs were scheduled for launch. As of May 1, 2015, the launch of these new gTLDs is approximately one quarter completed with approximately 1,000 new gTLDs still to launch.

© 2015 BARNES & THORNBURG LLP

.CASINO gTLD Launches Sunrise

Lewis Roca Rothgerber LLP

The new gTLD .casino opens to the public on June 3. Trademark owners may be able to register their trademark as a .casino domain name ahead of the public launch. The “sunrise” early registration period for trademark owners opened March 24 and ends May 23. .casino domain name registrations are available now for trademark owners that have already recorded their marks with the trademark clearinghouse (TMCH). As explained below, there is still time for mark owners that have not yet recorded marks with the TMCH to participate in the sunrise registration period.

Gaming enterprises should do what they can to protect their trademarks in the .casino gTLD prior to June 3. Given the proliferation of online gaming, the new gTLD .casino poses a particularly high risk to trademark owners in the gaming industry. The .casino gTLD is a regulated gTLD, meaning registrants must represent that they have the appropriate licenses and credentials and must report any material changes to the registry. However, in many jurisdictions, the licensing process is far less strict than it is in the U.S. and it is not clear how the registry plans to verify such representations.

Risks Associated with .CASINO

The gTLD .casino is one of hundreds of new gTLDs launched as part of the first phase of the Internet Corporation for Assigned Names and Numbers (ICANN’s) new gTLD program. The new gTLDs offer more registration options to the public than existing “traditional” gTLDs such as .com, .net, .org, .biz and .info. But with hundreds of new gTLDs comes an increase in risk for trademark owners. For gaming enterprises, the highest risk posed by the new gTLDs is the new gTLD .casino. Third party registration of your mark or brand as a .casino domain name could cause immense damage to your brand and company. Imagine third party operation of the domainwww.YOURBRAND.casino for an offshore gaming site, a site that redirects consumers to your legitimate or illegitimate competitors, or a site that otherwise tarnishes your brand.

Mark owners can prevent this scenario by recording their marks with the TMCH and participating in the .casino sunrise and/or landrush domain registration periods. Although there are options for enforcement “after the fact” of a third party registration for your brand, these may face difficult proof problems (especially as to the necessary showing of “bad faith”) and can be expensive.

The Trademark Clearinghouse (TMCH)

Generally, only trademarks registered with a national trademark office, such as the U.S. Patent and Trademark Office (USPTO), are eligible for registration with the TMCH. Recordation with the TMCH offers several benefits, but the critical benefit of TMCH recordation is eligibility to register the recorded mark as a domain name during the sunrise registration period for any new gTLD, including .casino. Trademark owners may not participate in the sunrise registration period for .casino without first recording their trademark(s) with the TMCH.

In our experience, it takes up to three weeks for the TMCH to complete the recordal process. Accordingly, for companies planning on participating in the .casino sunrise period, we recommend filing TMCH recordal(s) by no later than April 30. Please contact us to discuss the recordal of marks with the TMCH.

Sunrise Registration

Mark owners who have recorded trademark(s) with the TMCH are eligible to participate in the sunrise registration period for .casino. We expect the sunrise registration fees for a .casino domain name to fall between $200 and $300. The sunrise period is open until May 23 but validation of your trademark registration and specimen of use may take two to three weeks. During the sunrise period, mark owners may only register a domain name consisting of the identical mark recorded with the TMCH. For example, the owner of the TMCH recorded mark MYMARK is eligible to register the domain www.mymark.casino during the sunrise period, but is not eligible to register the domain www.mymarkslots.casino absent a separate TMCH recordation for the mark MYMARK SLOTS. In the latter case, we would recommend that the owner of the HOUSE mark consider the landrush registration period if it believes there is a high risk associated with the domain www.mymarkslots.casino. Further, please note that USPTO Supplemental Register registrations are not eligible for recording in the TMCH.

Landrush Period

Another advance registration period, known as the “landrush period” or “early access phase,” opens May 27. The landrush period is open to anyone willing to pay the fees associated with obtaining a landrush registration. Trademark registrations and TMCH recordation are not required for eligibility to participate in the landrush period.

Landrush registration fees depend on the date of registration. The registration fees start at $12,500 per domain on the first day of landrush, when demand for .casino domain names is presumably highest. The fees decrease to $4,500 on the second day, $1,500 on day three, $950 on day four, and $250.00 on days five through seven. These fees are in addition to the general registration fees for a .casino domain name.

The landrush period may be a good option for mark owners seeking to register domain strings that are not eligible for recordal with the TMCH. Such strings may consist of common law marks, or of a registered mark plus a generic term such as “slots.” The decision of whether and when to register domains during the landrush period is a business decision, weighing the potential risk of third party ownership of a given domain against the registration fees for a given day of the period.

Summary of .CASINO Deadlines

The .casino sunrise registration period is open now and closes May 23. TMCH recordals for marks intended for .casino sunrise registration should be filed by no later than April 30. The landrush period opens May 7 and closes June 2, with landrush fees decreasing daily over the period. .casino opens for general registration on June 3.

ICANN’s gTLD Program – A Look Back and Forward

Sterne Kessler Goldstein Fox

ICANN’s new Generic Top-Level Domain (gTLD) program has been in full swing for over a year now, so it seems an apt time to examine some statistics as to how brands are engaging with new gTLDs, utilizing the Trademark Clearinghouse (TMCH), and which new gTLDs may give .com a run for its money.

gTLD Registration

While ICANN is expecting more than 1,300 gTLDs to go live in the following years, for the moment only slightly more than 400 are available. Despite the relatively slow roll-out of new top level domains (the characters following the ‘.’ in a domain name), the total number of registrations within these new domains has exceed the one million mark.

To date, the top five strings sitting atop the gTLD registrations list are: .xyz, .club, .guru, .berlin, and .photography. The most popular new string .xyz, which is marketing itself as an alternative to the crowded .com registry, has amassed nearly 525,000 registrations alone.

Interest and Adoption by Top Brands

World Trademark Review (WTR) recently explored the .xyz domain registration of the 50 most valuable brands and found that 80% had either registered or blocked their brand in this space. WTR’s review also found evidence of prevalent cybersquatting; for example, a single individual currently owns the domains names “americanexpress,” “honda,” and “homedepot” in the .xyz space.

In general, the levels of brand adoption and interaction with the gTLD program overall remains inconsistent, with some brands significantly more pro-active than others in their fields. Even when it comes to the Trademark Clearinghouse (TMCH), companies traditionally known for brand protection, including RedBull, Nintendo, and Blackberry, have evidently decided not to register their marks with this rights protection database

Trademark Clearinghouse

The TMCH is ICANN’s centralized database of registered trademarks related to the new gTLD program. According to the most recent figures released by the TMCH, nearly 33,000 marks from 103 countries and covering 119 jurisdictions have been submitted. These marks represent protection for over 11,000 brands and businesses worldwide. Of the marks submitted, 87% have been registered by a trademark agent, approximately 50% for multiple years, and nearly 98% have been verified. The TMCH will still be accepting mark submissions and renewals indefinitely, and approximately 7,000 marks have been submitted since the beginning of the year. On November 5 of this year, the first group of TMCH registrations will be up for renewal.

The TMCH is also tasked with delivering Claims Notices to those attempting to register a domain name matching a trademarked term. In March the Clearinghouse revealed that in excess of 500,000 Claims Notices had been issued, and 95% of the infringing domain registrations were no longer being pursued. The TMCH hailed the number of delivered Claims Notices as an indication of a “high level of interest in trademarked terms from third parties,” and proof that “protection mechanisms are working.”

But, while these findings appear to suggest the success of defensive mechanisms, there are at least two alternative interpretations of the data that likely influence these numbers. First, many of the infringing domain registrations were likely the product of data-mining and unlikely to have been pursued regardless. The second is that the sheer number of Claims Notices being issued may be keeping individuals with valid applications on the sidelines. Regardless of the reasoning behind the Claims Notices, they are at least evidence of the popularity and interest surrounding the new gTLD program.

gTLD Round Two?

As the first expanded gTLD round rollout progresses towards conclusion, ICANN has begun planning the second round. The organization has stated publically that the next round is expected in 2016 at the earliest,” but experts believe 2017 is a more realistic time frame.

In preparation for the second round of gTLDs ICANN has published a Draft Work Plan. The 27 page document details several sets of reviews and activities scheduled to guide consideration for the second round of applications. The plan addressed program implementation reviews, root stability, rights protection, the GNSO, and competition, consumer trust, and choice reviews.

As the gTLD space continues to expand indefinitely, brands will have to continue to monitor and reassess how to navigate this dynamic landscape.