By Dr. Ulrike Grübler & Michael Schidler

Almost 5 years ago, the Internet Corporation for Assigned Names and Numbers (ICANN) agreed on the stepwise introduction of new generic Top Level Domains (new gTLDs). Around 970 new domain names such as .ticket, .music and .luxury have become available for registration of second level domains since then. In April 2016, the number of registrations under the new gTLDs hit 17 million. But that is not all: According to ICANN, over 1,300 new names or “strings” will become available in the next few years.

It comes as no surprise that the growing importance of new gTLDs is attracting  cybersquatters. But the latest figures show that many right holders may have learned their lessons from the past. They have  taken action proactively to protect their brands against a new wave of cybersquatting. Further to that, several very effective measures are in place or have been introduced together with the new gTLDs:

Uniform Domain Name Dispute Resolution Policy

The World Intellectual Property Organization (WIPO) has just released its latest statistics on its domain name dispute resolution services. The figures underline the importance of the Uniform Domain Name Dispute Resolution Policy (UDRP) in the fight against cybersquatting. UDRP has been well established for years and serves to solve cybersquatting disputes in an efficient and quick way. By filing a UDRP complaint trademark owners usually demand a domain name to be transferred. Since its introduction in 1999 more than 33.000 cases relating to about 61.000 domain names have been filed with WIPO, which was the first and is still the main provider for UDRP dispute resolution services. The UDRP not only applies to legacy generic Top-Level Domains (gTLDs), such as .com or .net, but WIPO also administers dispute resolution proceedings for 71 national registries and their country code Top Level Domains (ccTLDs), inter alia, including the ones of Australia (.au), France (.fr) and Colombia (.co). In addition, the UDRP also applies to all new gTLDs. More than 970 of them have been introduced to the Internet, for instance extensions like .nyc, .xyz  or .club.

The recently released WIPO statistics prove that the launch of new gTLDs resulted in an increase of UDRP cases by 4.6 % in 2015. In total, more than 2.700 UDRP complaints were filed last year. Although the number of new gTLD related cases is still relatively small (10.5 % of the caseload) compared to legacy gTLDs, new gTLD cases are soon to reach the number of ccTLDs cases (13.7%.). The overall figures are also slightly misleading since the .com domain alone was subject to 71.71% of all filings for UDRPs. The new .xyz domain, which is currently to the most popular new gTLD with more than 2.5 million second-level registrations, already ranks fifth in the 2015 WIPO cases ranking. From the WIPO statistics in can be concluded that fashion, banking, Internet and retail are the areas of commerce most suffering from cybersquatting as about 40% of all complaints were filed by brand owners from these areas.

Uniform Rapid Suspension

Apart from UDRP, there is another way to fight cybersquatting in relation to new gTLDs. In the process of launching new gTLDs, ICANN further introduced the Uniform Rapid Suspension System (URS), which serves to provide a fast path relief for trademark owners in case of clear-cut trademark infringements in connection with second-level domains. A domain name may be suspended within three weeks; however a complainant cannot claim transfer of domain name under the URS. This procedure is only applicable to new gTLDs introduced after June 2013. It is not administered by WIPO but by the Asian Domain Name Dispute Resolution Centre and The National Arbitration Forum (USA). In December 2015, ICANN announced that the Italy-based MFSD Srl. is the third URS provider. With nearly 500 cases most complaints were filed with The National Arbitration Forum and in more than 400 cases, the responsible experts decided that the domain name(s) must be suspended.

Trademark Clearing House

In addition to UDRP and URS, the Trademark Clearing House was introduced in connection with the new gTLDs. By registering a trademark with the Trademark Clearing House (TCMH) brand owners gain the first right to register the trademarked term during a so-called sunrise period, which is open for at least the first 30 days once a new gTLD is launched. According to the numbers published by the TCMH about 40.000 trademarks have been submitted for verification.

Taking the huge number of new gTLDs into account, most trademark owners are not likely to undertake defensive registrations under every extensions. Although the TCMH provides notifications services in case a domain name incorporating a mark verified by TCMH is being registered, submitting a trademark to the TCMH does not prevent third parties from registering infringing domain names.

Blocking Mechanisms

Finally, some registry operators of new gTLDs offer blocking mechanisms for trademark holders. By registering a mark with such a service, trademark holders can block matching second-level domain from being registered under the extension(s) operated by the respective entity. Insofar it must be noted that some entities tend to operate multiple new gTLDs. For instance, if a trademark is registered with the “Domain Protected Marks List” provided by Donuts Inc., which has applied for more than 300 new extensions, any future matching second-level registration under any new gTLDs operated by Donuts Inc. will be blocked.

One final tip: Weekly updated statistics on the new gTLDs can be found here.