Another sunrise, another new beginning. New gTLDs delegated and set to launch; are you ready?

New to the delegation pool

ICANN delegates new gTLDs daily, which keeps trademark owners on their toes. Since our last blog article, new gTLD delegations include:

• .gop
• .ryukya
• .yokohama
• .rest
• .saarland
• .consulting
• .vodka
• .haus
• .cooking
• .moe
• .rodeo
• .country
• .商城(xn--czru2d) – Chinese for “mall”
• .horse
• .fishing
• .vegas
• .miami
• .archi
• .black
• .ren
• .meet
• .sohu

The most recent additions will join the growing list of gTLDs that can begin their Sunrise periods. It is important to remember that though many gTLDs are allowing Sunrise periods to last longer than 30 days, they are required to have only a 30-day period.

gTLDs beginning Sunrise

Sunrise periods can quickly come and go — notice to the unwary. Following is a list of gTLDs set to launch and their corresponding Sunrise periods.

Before the general public can seek to register second-level domains (the letters or words to the left of the final dot), all new registry operators must conduct a Sunrise period of at least 30 days. During this Sunrise period, the trademark owner has the opportunity to register domain names that match its trademark in the new gTLD before that gTLD becomes available to the general public.

Each registry operator has its own procedure for accepting Sunrise registrations, which can be an aggravating path to follow. One registry operator giant, Donuts Inc., allows Sunrise registrants the ability to obtain a Sunrise registration through an approved registrar, such as GoDaddy.com. Currently, there is a $160 nonrefundable application fee associated with this type of registration on top of the domain name registration fee, which is set by the registry. This is just one example of how to obtain a Sunrise registration — but, again, every new gTLD operator has its own procedure.

gTLDs in Sunrise … Look closely because many are closing soon

Following is a list of all Sunrise periods that are open now and accepting Sunrise registrations.

For trademark holders to take advantage of Sunrise registration periods, they must have registered already in the Trademark Clearinghouse (TCMH) and obtained a verified signed mark date (SMD) file, which is generated by the TMCH. The SMD file will then need to be transmitted to the registry operator to verify the rights of the trademark holder. For more information about how to register in the TMCH, read our recent article.

Landrush … will it be a stampede?

Registry operators also are conducting a period known as Landrush, which comes after Sunrise and before general availability. During landrush, individuals looking to obtain a second-level domain within a new gTLD can pay for priority pre-registration or pre-registration, depending on the registry operator’s procedures.

Priority pre-registration is generally conducted in phases, and the first phase is typically the most expensive. For example, .holiday’s Phase 1 priority pre-registration fee is $12,569.99 and Phase 2 is $3,194.99. Contrast these costs with Phase 5, which is $219.99. Any individual can purchase a priority pre-registration “spot-holder.”

If there are no other purchasers in that phase, then the individual will obtain the second-level domain after paying the registration fee, which is in addition to the purchase price of the priority pre-registration fee. If there are no purchasers within a specific phase, then the second-level domain will remain available and proceed to the next phase.

If there are multiple purchasers, however, they will participate in a private auction. Whoever is willing to pay the most will obtain the domain after paying the winning registration fee. Those who are unsuccessful at the private auction will receive a refund of their priority pre-registration fees.

If no one has purchased a particular domain after all phases of priority pre-registration are completed, there is a period of pre-registration prior to general availability, which comes at a significantly lower cost. Continuing our example of .holiday, the pre-registration fee is $69.99. Pre-registration is conducted on a first-come, first-served basis.

Again, each registry operator can conduct landrush as they wish; this is simply an example of what some prominent new gTLD operators are doing. During this phase, Trademark Claims Services will notify a potential second-level domain registrant of a trademark holders rights, and will notify a trademark holder if the registrant proceeds to registration after receiving notification.

The following gTLDs have recently closed their Sunrise periods and may be conducting landrush at this time.

What to do?

Trademark owners should engage in strategic planning to protect their trademark portfolios, and they will be well-served to establish and implement strategic plans for monitoring and policing the gTLDs for infringements. Preparing and filing trademarks in the TMCH to take advantage of protection mechanisms should be a top priority. Trademark owners also should take proactive measures to monitor the launch of new gTLDs that may prove to be valuable assets to the brand as well as those that may be detrimental. With each new beginning, there is a new opportunity for trademark abuse, and trademark owners need to be prepared.

Read Porter Wright’s law alert about gTLDs.