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

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

A consumer goods brand discovers, two weeks after a new .store sunrise period closes, that its exact trademark has been registered as a .store domain by a third party with no apparent connection to the brand. The registrant's site displays pay-per-click advertising for rival retailers. A five-figure buy-back demand arrives shortly after.

This case study examines how a brand owner can protect a brand in a new .store gTLD launch – covering the choice between the Uniform Rapid Suspension procedure and a full UDRP complaint before WIPO, the evidentiary standard each route demands, and the realistic outcome the facts supported. URS suspends a domain for the remaining registration term but does not transfer ownership; where transfer is the goal, a UDRP complaint – with its USD 1,500 WIPO filing fee for a single-member panel – is the operative tool. The distinction matters from the first day of planning.

Below we set out the situation, the strategy we applied, and what the outcome illustrated for any brand facing a similar problem in a new gTLD zone.

The Situation: a Trademark Registered as a .store Domain

Our client held registered trademark rights in a stylized word mark used across its retail operations for several years. The mark was well-known in its sector. When the .store new gTLD launched its general availability period – following a sunrise in which the client had not enrolled – a third party registered the domain that corresponded exactly to the mark.

Within days, the domain was live. It resolved to a pay-per-click landing page featuring links to competing retailers. The registrant had no prior history of operating under that name and held no trademark rights of its own. The client contacted us in spring 2025, a few weeks after the registration date, asking whether a rapid suspension or a full dispute was the right first move.

The core tension in that question is one we see regularly. URS – the Uniform Rapid Suspension procedure – was designed specifically for new gTLDs and offers a faster and lower-cost suspension. But it carries a higher evidentiary burden: the complainant must establish its case by a clear and convincing standard, meaning the abuse must be evident on the face of the record. More importantly, a URS order suspends the domain for the remainder of its registration term. It does not transfer the domain to the brand owner.

Why UDRP Was the Operative Route

Because the client's goal was ownership of the domain – not merely its deactivation – a UDRP complaint before WIPO was the appropriate vehicle. The .store registry operates under ICANN's accreditation framework, and all accredited registrars for new gTLDs must accept UDRP jurisdiction. The three elements of Paragraph 4(a) applied without modification.

On the first element, identical or confusing similarity, the analysis was straightforward: the domain reproduced the client's word mark without alteration. On the second element – no rights or legitimate interests – the registrant had no trademark, no prior use of the name in commerce, and no relationship with the brand owner. Nothing in the record suggested a bona fide offering or a commonly known identity. On the third element, bad faith, the pay-per-click content targeting competitor links provided the clearest Paragraph 4(b) signal: the registrant was attracting users to the site by creating confusion with the mark, then monetizing that confusion through referral revenue.

We assembled the evidence package: the trademark registration certificates, WHOIS records showing registration date relative to the trademark priority date, screenshots of the parking page and its advertising links, and a declaration confirming no authorized relationship between client and registrant. The complaint was filed at WIPO in summer 2025 under a single-member panel, with the standard USD 1,500 filing fee.

If you are weighing URS against a UDRP complaint for a domain in a new gTLD zone, the choice turns on whether you need ownership or suspension. To assess the three UDRP elements against your specific facts, contact info@cognomenlaw.com.

What the Outcome Demonstrated

The panel transferred the domain. The decision reflected the standard analysis: a mark of established distinctiveness, a registration with no plausible legitimate purpose, and a use pattern – the pay-per-click page – that fell squarely within the Paragraph 4(b) bad-faith factors. The entire proceeding ran approximately eight weeks from filing to registrar implementation, consistent with the typical WIPO timeline for single-member panel cases.

Two points from this matter carry forward as practical guidance.

First, the sunrise period for new gTLDs exists precisely to prevent this scenario. Sunrise allows trademark holders to register their marks before general availability. Missing a sunrise does not foreclose a dispute – this case shows that – but it adds time, cost, and uncertainty that participation would have avoided. Brand monitoring services that flag new gTLD launches before general availability are worth the investment for any registrant with a significant mark.

Second, the evidentiary asymmetry between URS and UDRP is real and consequential. Had the client sought only a URS suspension, ownership would have remained with the registrant at the end of the term. The registrant could then re-register and repeat the pattern. The UDRP, with its transfer remedy, resolved the problem permanently.

For a read on whether the three UDRP elements are met for your .store or other new gTLD domain, reach us at info@cognomenlaw.com.

Decision Points for Brand Owners in New gTLD Launches

When a brand faces a hostile registration in any new gTLD, three questions determine the strategy. Which remedy do you need – suspension or transfer? How strong is the bad-faith evidence on the face of the record? And how quickly must the domain be deactivated?

If the domain is live and driving consumer confusion right now, and you hold a trademark of clear distinctiveness with no plausible argument for the registrant's legitimacy, URS can deactivate it within weeks. But if you want title, or if the evidence requires a full written argument to appreciate, the UDRP is the tool. The two procedures are not interchangeable; they are sequential options with different ceilings.

A registered trademark predating the domain registration is the foundation of either route. A mark applied for – but not yet registered – at the time of domain registration typically weakens the first UDRP element, though panels do recognize unregistered rights where common-law use is well documented. In this matter, registration predated the domain, which kept the analysis clean.

Related at COGNOMEN

• URS and new gTLD dispute services – assess your options across new gTLD zones
• Guide to suspending a domain via URS – step-by-step process for new gTLDs
• FAQ on reversing unauthorized domain transfers in ccTLD and gTLD zones