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Take This to the .bank: Financial Institutions Need to Prepare for New gTLDs

December 16, 2014


Take This to the .bank: Financial Institutions Need to Prepare for New gTLDs

December 16, 2014

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Hundreds of new generic top-level domains are in the process of being rolled out this year and next, including many that will be of interest to the financial services industry. One of them that seems likely to attract a high level of interest and buy-in is .bank. fTLD Registry Services, a joint venture formed by a number of financial services companies and trade associations, applied for and was recently awarded the right to operate the .bank and .insurance gTLDs. The .bank domain is intended for use solely by financial institutions, and domains within this gTLD can only be registered and used by members of the banking community to serve the ends of the banking community and its members. In addition, fTLD has set up numerous additional security measures and other eligibility restrictions in order to register and use .bank domains, to ensure that these domains can only be registered by bona fide financial institutions and so that sites operating at those domains will be (and will be seen as) exceptionally reliable and secure. (These added security measures mean that .bank domains will end up costing more than ordinary .com domains, but fTLD has not yet revealed their pricing structure.)

While it remains to be seen whether the new gTLDs like .bank will actually catch on with consumers, fTLD has made a significant investment to keep the .bank gTLD relatively free of phishing and other illegitimate sites, so that it can be a relatively safer environment for financial institutions to build their online brands.

Currently the .bank gTLD is expected to be launched sometime in or around June of 2015, with a “sunrise” period beginning a month before, in May 2015. The sunrise period permits owners of registered trademarks to reserve domains corresponding* to those trademarks before the domains become generally available.

[* Note that “corresponding” means exactly corresponding – thus a trademark registration for FIRST NATIONAL BANK would permit you to register the domain, but not]

For those in the financial industry, the coming of the sunrise period means that the time is now to assess the trademark status of core brands in order to fully participate in the sunrise period and secure the rights in the .bank domains which correspond to those brand(s). This is going to be particularly critical for banks having commonly used words in their names where there could be multiple legitimate claimants to the same or similar domains.

Some considerations for financial institutions:

  • Conduct an audit of your current trademark holdings to verify that core brands are protected by federal trademark registrations. Most of the trademark protections built into the new gTLD regimes are limited to recognized trademark rights – and that usually means nationally registered marks (although some exceptions are possible, such as trademark rights that have been recognized by a court).
  • Immediately file federal trademark applications for those core brands which are not yet so protected. Filing now may not be in time to secure a registration before the May 2105 sunrise period opens, but at the very least it will provide the ability to take remedial steps — such as URS or UDRP proceedings — in the event a conflict does arise.
    Submit your registered trademarks to ICANN’s Trademark Clearinghouse (TMCH). Listing with the TMCH is a pre-requisite to participation in the .bank sunrise period, and will help protect you in many other gTLDs beyond .bank. Further, Donuts, the company behind many of the new gTLD’s offers a similar blocking service that you can also take advantage of.
  • Make the appropriate sunrise filings once the sunrise period opens, and also consider registering other .bank domains corresponding to your other brands once general availability opens.

The .bank domain is not the only new gTLD that will be of interest to financial services companies. Other finance-related gTLDs that have been delegated but for which sunrise dates have not yet been announced include:

  • .investments,
  • .trust,
  • .reit,
  • .fund, and
  • .insurance.

Sunrise periods have already ended for the following domains, which will soon be open for general availability: .capital, .cash, .credit, .creditcard, .finance, .financial, .lease, .loans, .management, .mortgage, .properties, .property, and .ventures. Others including .banque, .creditunion, .forex, and .realestate are still in contracting and have not yet been delegated.

For more information about the new gTLDs generally, please visit Fish’s dedicated website.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes and is not intended to be and should not be taken as legal advice.

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