Key points

• New generic top-level domain (gTLDs) extensions are frequently launching.
• Future gTLDs (to be confirmed) include: .web, .data, .fly, .save, .book, .music, .buy, .mobile, .play, and .now.
• Trade mark registrations will not necessarily protect your marks in the domain name space.
• Dentons is now a Trademark Clearinghouse Gold Agent, and so can assist brands to monitor and take action in this area.

There are now over 1,500 new generic top-level domain name extensions (gTLDs) available for registration, and the selection is expanding. Options are no longer limited to the original favourites such as .com, .net, and .org. Businesses now have the choice to register domain names with extensions that highlight their particular product, service or industry, for example: .shop, .app, .biz, .info, and .online.

Recently launched gTLDs include:

• .watches
• .case
• .dad
• .prof
• .mov
• .nexus
• .zip
• .foo
• .phd
• .esq

The Trademark Clearinghouse has also announced that future gTLDs (to be confirmed) include: .web, .data, .fly, .save, .book, , .buy, .mobile, .play, and .now. The new gTLD ‘.music’ is expected to launch in August 2023.

A trade mark registration with a local trade mark office alone does not necessarily prevent a third party from registering a domain name containing your mark. Preventing a third party from registering a domain name containing your registered mark (or part of it) is getting harder as more and more domain name spaces become available. There is an ever increasing risk of a third party ‘poaching’ a domain name containing your trade mark, whether the motive is to re-direct traffic away from your genuine website, or to offer the domain for sale back to you.

This expansion of the domain world means that more extensive and robust online brand protection strategies must be deployed. To address this gap in protection, the Internet Corporation for Assigned Names and Numbers (ICANN) established the Trademark Clearinghouse (TMCH), a centralised global database of validated registered trade marks that is connected with all gTLDs.

Trade mark owners who record their registered marks with ICANN’s TMCH can benefit from the priority registration of that mark as a domain name whenever a new gTLD launches. The brand owner also receives ongoing notifications if any third party attempts to register a domain name matching their trade mark.

Next Steps

Now is the time for trade mark owners to act on any existing and potential future gTLDs such as .web, .data, .fly, .save, .book, .music, .buy, .mobile, .play, and .now.

To protect your brand against online impersonators and cyber-squatters, Dentons strongly recommends recording all critical trade mark registrations with TMCH. As Dentons Australia is a TMCH agent, one of only a very few in Australia, this allows us to offer a cost-effective TMCH registration and a comprehensive brand protection service.  We can assist with:

• Recording your trade marks with the TMCH;
• Registering new domain names including your brand;
• Monitoring TMCH notifications on your behalf; and
• Managing potential claims against third-party infringers in the domain name space.

For a more detailed overview of the TMCH and what Dentons can offer, please refer to our brochure here or get in touch with our team.