Despite the attempts of Reed Smith and some others in the intellectual property field to educate the public on the upcoming explosion in the number of global top-level domains (“gTLDs”) (the string to the right of the dot, such as .com or .edu), we believe that the vast majority of the public, and even the majority of brand owners, is unaware that the first new gTLDs have recently launched. One such new gTLD is .BIKE.*

While the launch of .BIKE does not give us data to tell whether brand owners are “aware” of the new gTLDs, it does present a limited and controlled environment to test brand registration of second-level domain names in an industry-specific gTLD. There are approximately 150 brands of bicycles in the United States (according to the National Bicycle Dealer Association), but most of these brands are relatively small.

The questions posed by this article, conducted not quite two weeks after the launch of .BIKE, are:

• Of the top 20 bicycle brands, how many actually registered their brands as second-level domain names within .BIKE (e.g., Reedsmith.bike).
• If a brand did not register its brand as a BRAND.BIKE, who, if anyone, did register that domain?

.BIKE was chosen for this study because of all the initial gTLDs launched, it is the generic-word top-level domain that is most confined to a specific industry. Furthermore, the name of the industry could not be more clear—one would assume that if a bicycle company were going to register domain names in any new gTLD, .BIKE (or .BICYCLE, which is not part of the current slate of new gTLDs) would be at the top of its list. The way we chose our 20 brands was to take the 10 brands reported as the top 10 in sales volume in the 2011 National Bicycle Dealer Association survey, and then add in 10 additional brands that most commonly came up in searches of top bicycle brands. No offense is meant to any brand that just missed the cut, and the list was not manipulated in any way to achieve a certain result.

The following chart shows that of the 20 brands selected for the study, as of February 10, 2014, all 20 were registered as domain names in .BIKE. However, only four of the 20 brands have clearly been registered by the actual brand owner. According to WHOIS data, another three are being held by the registry Donuts, and it is unclear for what purpose—whether as a premium name, as part of a blocking program, or otherwise. The other 13 are all being held by third parties who seemingly have no relation to the brand owner, quite possibly cybersquatters. While the sample size of this study is small and not necessarily statistically significant, it supports the supposition that most bicycle brands either were not aware of the .BIKE launch or did not take protective steps to prevent potential cybersquatting once the launch occurred. One can only hope that as time goes by and brand owners are more proactive about the hundreds of other new gTLDs about to be launched, this issue will not keep occurring.

* Reed Smith has written regularly on the launch of the new top-level domains, including what they are and what they mean for brands. You can find Reed Smith’s primer on the gTLDs at http://www.reedsmith.com/Understanding-the-Many-Challenges-Involved-in-Registering-New-gTLDs-10-01-2012/ and discussions regarding the Trademark Clearinghouse and some of the protections in the new system at http://www.reedsmith.com/Under-Construction-and-Open-for-Business-New-gTLD-Trademark-Clearinghouse-Set-to-Open-March-26-03-28-2013/ and http://www.reedsmith.com/Its-a-BRAND-New-World-Update-on-ICANNs-Expanded-gTLD-Program-02-01-2013.

Client Alert 2014-046