Case study: protect a brand in a new .global gTLD launch

Case study: protect a brand in a new .global gTLD launch. UDRP and ccTLD domain recovery and defense across .global. Email the firm to assess your case.

A regional consumer-goods company had spent years building a mark it considered distinctive. When a new generic top-level domain launched, a third party registered the company's exact brand name in that zone within the first days of general availability – pointing the domain at a pay-per-click landing page that harvested referral fees from the company's own product categories. The registration was clearly opportunistic. The question was which procedure to use, how quickly, and what evidence would carry the day.

Protecting a brand in a new gTLD launch means understanding the interplay between the Uniform Rapid Suspension (URS) system and the standard UDRP: URS offers faster suspension at lower cost, but it does not transfer the domain and demands a clear-and-convincing evidentiary standard; the UDRP delivers an actual transfer but takes roughly two months. Choosing correctly depends on the remedy you need and the evidence you hold on day one.

This case study walks the situation, the strategic choice, and the outcome – with the key lessons for brand owners facing the next wave of new gTLD launches.

The Situation: An Opportunistic Registration in the First Days of Launch

Our client is a consumer-goods brand with registered trademark rights in multiple classes across several major jurisdictions. When a new gTLD opened general availability in early 2025, the client had not applied for its mark during the sunrise period – an oversight that left the field open to a third party during the general-availability window. Within roughly seventy-two hours of the zone going live, the disputed domain was registered under the exact brand mark by an entity with no prior connection to the company.

The registrant had done nothing novel. The landing page was a standard parking template, monetized through pay-per-click links that targeted the client's own product verticals. But "standard" is not a defense. The domain carried the exact mark, appeared in search results alongside the client's own site, and was already generating misdirected traffic within days.

The client's general counsel contacted us mid-January 2025. Two questions were on the table: file URS immediately for a fast suspension, or proceed directly to a UDRP complaint for a transfer. A third option – combining both in parallel – was considered and weighed against budget and timeline.

The Strategic Choice: Why UDRP Was the Right Tool Here

The URS is purpose-built for new gTLDs. It can freeze a domain quickly, but the suspension lasts only for the remaining registration term – there is no transfer. If the registrant allows the term to expire, the name can be re-registered by anyone, including the same bad actor. For a brand owner with long-term interest in the domain, that outcome is incomplete.

There is a second, equally important difference. The URS applies a clear-and-convincing standard – a higher evidentiary bar than the UDRP's preponderance-based analysis. When the evidence is overwhelming (the mark is well-known, the registration is identical, the registrant is clearly a stranger), URS can clear that bar. When any element carries ambiguity – a common or descriptive word in the mark, a registrant with a creative but colorable fair-use argument – the URS examiner may deny, leaving the brand owner with nothing and the registrant still in place.

In this matter, the client's mark was strong: federally registered, in use for over a decade, and not a dictionary term. The bad-faith evidence was direct – pay-per-click monetization of the mark's product categories, registered within days of general availability, with no plausible good-faith use. That evidence satisfied both standards. We advised filing UDRP at WIPO rather than URS, for a single reason: the client wanted the domain, not just a suspension. The filing fee was USD 1,500 for a single-member panel. The company's legal costs were comfortably within market range for a straightforward single-domain complaint.

If your brand faces an opportunistic registration in a live gTLD and you are weighing URS against a full UDRP complaint, the decision turns on facts, not preference. For an assessment of the three UDRP elements on your specific domain, contact info@cognomenlaw.com.

The Evidence Package and the Outcome

A UDRP complaint succeeds or fails on the quality of the evidence assembled before filing. We worked with the client to build a record covering all three elements of Paragraph 4(a) of the UDRP.

On the first element – confusing similarity – the domain reproduced the trademark exactly, with only the gTLD extension appended. Panels consistently hold that the addition of a gTLD string does not distinguish a domain from the mark it reproduces; the extension is a technical necessity of the Domain Name System, not a source-distinguishing element. That element was straightforward.

On the second element – no rights or legitimate interests – the registrant had received no license from the client, had no business history under the name, was not commonly known by the mark, and was using the domain commercially for pay-per-click links. Each of the Paragraph 4(c) safe harbors was plainly unavailable. The complainant's evidence included WHOIS records showing the registrant was a domain portfolio entity, a screenshot archive of the landing page taken on multiple dates, and a declaration confirming no authorization had been granted.

On the third element – bad faith in registration and use – the timing was determinative. Registration within days of general availability, of an exact-match brand term, pointed at a monetized parking page, is a pattern panels have identified as quintessential bad-faith conduct. The Paragraph 4(b) factor covering commercial gain through confusion was directly applicable. No explanatory filing or response arrived from the registrant. Default was the result.

The transfer order was issued approximately eight weeks after filing. The domain was transferred to the client within days of the registrar implementing the panel's decision. The client now holds the name in the new zone, integrated into its broader portfolio. No sunrise-period strategy had been needed after all – the post-launch UDRP proved sufficient. That said, the outcome would have been less certain had the registrant offered even a colorable response. Early registration during sunrise, where the zone operator offers it, remains the cleanest brand-protection step.

If a similar registration has appeared in a new gTLD zone affecting your brand, the window for action is open – but the longer a monetized domain runs, the more evidence the registrant accumulates of active use. To weigh UDRP against a court action for your case, email info@cognomenlaw.com.

Related at COGNOMEN

• URS and new gTLD dispute services – full scope of procedures available
• How to suspend a domain under URS – step-by-step guide for .biz and new gTLDs
• Analysis: recovering a stolen or hijacked domain across zones