Protect Your Brand ahead of New Domain Launches

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Christy: Hello, everyone, and welcome to today's webinar, "Protect Your Brand Ahead of New Domain Launches." My name is Christy DeMaio Ziegler, and I will be your moderator.

Joining us today is Molly McCormick. Molly is a product manager for domains at CSC in our Digital Brand Services Division, based in Wilmington, Delaware. With over a decade of experience in domain industry, she brings deep expertise in domain management and compliance. And with that, I'd like to turn the webinar over to Molly.

Molly: Thanks, Christy. Hi, everybody. Thank you for joining us today. As Christy said, we wanted to take the opportunity to talk about brand protection before all of the new gTLD launches. So today we're going to cover a couple of different topics. We're going to start talking about kind of the resurgence we're seeing with new gTLD launches. We're going to talk about what Trademark Clearinghouse is, or TMCH, and why that's really important to protecting your brand. And then our recommendations and advice for what companies should do next in preparation for these new gTLD launches.

So before we get to what should you do, what is Trademark Clearinghouse, let's take a step back and talk about new gTLDs from the beginning and really kind of bring us to where we are today. So it's been about a decade, over a decade at this point, since ICANN launched the first New gTLD Program.

And that application period was opened in 2012, and that allowed different people and organizations to apply for extensions or strings that would then replace the right of the dot. So when you're looking at a domain, you have the left of the dot, which if we use the example cscglobal.com, cscglobal is to the left of the dot, and then you have the dot. And then to the right of the dot is the extension, and for this example, we'll say .com.

The New gTLD Program opened up those extensions to different brands. You could register a brand directly or terms that applied either to an industry or just really broad terms in general.

So it really took the domain industry and the extension pool from a pretty narrow, where you had your historical legacy .coms, .nets, .orgs, and your ccTLDs out in the world, and it really kind of changed the game in terms of domain management and what domains brands needed to register to protect their brands. So because of this big boom in the new gTLD world, we saw a very high, strong surge of registrations over the New gTLD Program simply because a lot of brands wanted to move towards using new gTLDs. And then some was just really uncertain with the adoption of new gTLDs. We didn't know how specific industries, let alone the world, were going to adopt the New gTLD Program and start using them.

So we saw a really strong surge of registrations. Organizations were out there making sure that they're protecting their brands and registering all these domains. You definitely saw adoption, right? There are industries that are really using the New gTLD Program to their strength. .link is one of them, .insurance. So we've seen adoptions over the years, but it definitely wasn't all-encompassing. Not everybody moved to that new gTLD as their core brand or core domain.

So over the years, I would say 2014, 2015, 2016, we saw this really strong surge of registrations. Since then, we're still working through that original application list from ICANN, and launches are still happening. We've seen multiple this year, and we have more to come. But I would say that organizations have really slowed into understanding how their industry is using new gTLDs, how their clients are using new gTLDs or not using new gTLDs. And we've seen organizations adapt to what is happening.

So some organizations are still registering and making sure their core brands are always registered. Some really still register across the board every new gTLD for all variations of their brands. But it's really kind of settled into a pattern. And while things are still launching, it's definitely not at the height that it once was.

But we're here, and now the 2026 application period has ended. And ICANN has announced that we expect over a thousand new extensions to come in the next few years. So it's a really important time for us to look back and learn from history and understand, "What do we need to be doing better?" and really talking about how to reset possibly your new gTLD policy and understand, "What does it mean for you and your organization in 2026, and how do you protect those brands?"

So when ICANN originally opened the New gTLD Program, they wanted to make sure that organizations or trademark holders could protect their brands first. So they wanted to give the trademark holders that opportunity. So what they did was they partnered with the Trademark Clearinghouse as the verification database. So let's talk a little bit about the Trademark Clearinghouse because it's a very important piece to protecting your brand ahead of these new gTLD launches.

So like I said, ICANN wanted to make sure that trademark holders had the opportunity to protect their brand. And so a trademark can be registered out in the world with different trademark registries. So you could be registered with WIPO or USPTO or different national or regional registries. And it made registering it in that trademark period a little bit more cumbersome because there was a level of validation that had to be done each time. So they partnered with Trademark Clearinghouse as the clearinghouse and as the database provider to say, "Okay, you have verified your trademark. You have registered it with the Trademark Clearinghouse. And that means you can register it during the sunrise period."

So to protect brand holders, ICANN mandates that all new gTLD launches have a sunrise period. It's a minimum of 30 days long, and that gives trademark holders that first right to the domain registration before it's released to the general public. We see a sunrise period for every new gTLD that's launched. Some registries run a land rush or an early access period, and that is really up to the discretion of the registries. And then we see general availability. But that sunrise period is where trademark and brand holders can really secure and protect their domains.

So to register during that sunrise period, what happens is the trademark holder registers their trademark with the Trademark Clearinghouse, and they receive an SMD file. That SMD file is required at registration. So an SMD file, or Signed Mark Data file, is an encrypted file that basically says, "Here are all the details that ICANN and registries need to know to say, 'This has been verified as a valid trademark holder, and they can register it during this time period.'" So it plays a really big role in that initial time period, but it's not just set for the sunrise phase.

There are direct benefits, like I said, like the sunrise access. There are trademark intelligence benefits to it. And then there are strategic benefits. We've seen the rise of different blocking programs, and they are requiring, at times, right, they're requiring SMD files, or verified trademark holders, they needed that verification to be able to register those blocks.

It can help support enforcement efforts. So if you need to do a takedown or prove that you own that trademark, we've seen the Trademark Clearinghouse support those efforts. And then they also send out what's called NORNs, or ongoing notification. I think it stands for Notification of Registered Names. And if somebody else registers a domain with that brand string that you have trademarked, you get an official notification to keep you updated on what's happening with your brand out in the world.

So Trademark Clearinghouse, while yes, it does always help when you're registering during that sunrise period, it has ongoing and lasting benefits with the registration at the Trademark Clearinghouse. It's not meant to be an overarching rights protection mechanism, right? It doesn't just say like, "Oh, you registered it here, and now it's going to block across all extensions." But it gives you first right access to those extensions, and then it provides you with the ongoing registration notifications and strategic benefits.

Trademark Clearinghouse is complicated if you look at it, but really we could break it down into four key parts. So not in any particular order, but you have the mark and the labels. So the mark is your brand string, and labels and marks help to normalize it for a domain. So a domain does not have a space in it, and if your trademark is CSC Global, right, the mark and the labels will put the appropriate hyphens in there, or it puts it into the correct domain syntax so that it aligns with a domain registration. So you can have a mark, and then the variations of that mark with the hyphens or any other variations within the labels help protect that domain.

The SMD file we just talked about, that Signed Mark Data file, that's the proof that you are a registered trademark holder with the Trademark Clearinghouse that is provided for sunrise.

And then proof of use. You need to provide proof of use to these clients or to the trademark. You need to prove to them that you're not just trying to get a Trademark Clearinghouse filing. You do use this. You are a valid trademark holder. And then there are expiry dates.

So those are four key parts that make up the Trademark Clearinghouse filing.

And so, as we aim to go into 2026 and 2027, or ending 2026, I should say, and then going into 2027, it's a really good time to look at your Trademark Clearinghouse portfolio. Because of that lull over the past decade or so, we've seen that a lot of brand owners have neglected their Trademark Clearinghouse. So it's a great time to look at it again.

So I would just say start with the basics. Look at your brands and your core organization brand strings and understand they probably have changed over the past 10 years. A lot have changed within different organizations. So are all of your core brands registered with the Trademark Clearinghouse? If not, now is a great time to get them registered. If they are, it's a great time to check into all of the data points behind it, so making sure that the trademark owner is still a valid organization. We see M&As all the time or different changes within an organization that could impact it.

And then take a look at the expiry dates. So there are expiry dates on the registered mark itself. There are expiry dates within the SMD files or within the proof of use. But there are a lot of moving parts to a Trademark Clearinghouse filing. Now is the time to take a look at it and understand, "Am I set for 2027? What's coming up next? How can I be prepared?" Because if history tells us anything, once ICANN says it's time to go, we can start seeing these extensions launched pretty quickly. So now is the time to take the time and prepare and get your portfolio in order.