ICANN's recent announcement of what it called "an exciting milestone in the evolution of the domain name system" -- the delegation of the 1,000th new generic top-level domain (gTLD) -- went largely unnoticed. While that's consistent with the new gTLD program in general (at least from the perspective of the general public), that doesn't mean trademark owners should forget about them. I can't think of a single new gTLD that I've seen promoted in a mainstream advertisement or any company's marketing materials.
Of course, as a domain name attorney, I'm well aware of the new gTLD program in general, as well as some specific adoptions, such as <abc.xyz> by Google's parent Alphabet; <badgerbank.bank> by a small bank in Wisconsin; and <global.canon> by the camera company.
The nTLDStats website reports that more than 26 million new gTLDs already have been registered. And a $70 million offer from one registry operator (Donuts) to another (Rightside) clearly says something about the size and scope, if not the perceived future importance, of the domain name business.
But most people with whom I talk outside the domain name industry seem fully unaware of any of this.
The sheer number of new gTLDs means that most of them are struggling for recognition. Indeed, excluding the top five most-popular new gTLDs (.xyz, .top, .wang, .win and .club), no new gTLD accounts for more than 2% of the market, according to nTLDStats.
Many of the new registrations are speculative, defensive or infringing -- none of which seems to be sustainable.
As I've written before, new gTLDs are appearing with increasing frequency in domain name disputes. Indeed, of the top 10 most-disputed top-level domains in proceedings at the World Intellectual Property Organization (WIPO) so far this year (through June 28, 2016), half are new gTLDs (.xyz, .top, .club, .online and .cloud). Trademark owners are usually finding it pretty easy to win proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), depriving domain name registrants of any benefits they have sought in registering in the new gTLDs.
In some UDRP decisions, the new gTLD is even making a trademark owner's case stronger. For example, in ordering transfer of the domain name <premierleague.club> to The Football Association Premier League Limited, one UDRP panel wrote:
In the Panel’s view, the inclusion of the TLD “.club” does not diminish the confusing similarity. To the contrary, this Panel finds that the inclusion of the descriptive term “club” reinforces the confusing similarity between the PREMIER LEAGUE trademark and the disputed domain name because the teams that compromise Complainant’s league are commonly referred to as clubs.
(See also my earlier blog post: "When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?")
Still, in many cases, trademark owners are simply choosing to ignore the new gTLDs because they don't value them for themselves and they sometimes don't care what a cybersquatter is doing in a gTLD that no one knows about.
But trademark owners cannot ignore the new gTLDs entirely. Some gTLDs may be more important than others, due to their popularity or their relevance to the trademark owner's business. And some domain names using new gTLDs may be particularly problematic, based on how they are being used.
Ultimately, it seems as if a relatively small number of the now 1,000+ new gTLDs are likely to gain much traction. Trademark owners would be wise to monitor their popularity and selectively enforce their rights when doing so is necessary or important to protect their brands.
