When it comes to trademark protection on the Internet, the only constant is change. And the Internet is about to change again as soon as the Internet Corporation for Assigned Names and Numbers (ICANN), the governing body of the domain name system, completes its evaluation of the more than 1900 applications for new domain name extensions. What this means is that in addition to .COM, .NET and other familiar top-level domains, the amount of domain name real estate available may well expand to include extensions such as .HOUSE, .PROPERTY, etc.
The new extensions will create both marketing opportunities and brand protection headaches. Home buyers, sellers and investors may find it easier to locate real estate information, resources and services online. However, brand owners will now have more internet real estate to watch over to ensure their trademarks are not being misused. In the real estate sector alone, applications have been filed for the top-level domains .HOUSE, .PROPERTY, .REALESTATE, .REALTOR, .REALTY, .RENT and .RENTALS. In some cases, multiple applicants are seeking control of the same extension (e.g., there are four separate applications for .REALESTATE). Ultimately, the top-level domain .REALESTATE will be auctioned to the highest bidder.
Real estate companies must start formulating strategies for proactively registering and defending domain names corresponding to their core marks so they are not caught flat-footed once ICANN begins delegating the extensions later this year. By way of example, a company such as RE/MAX might wish to register REMAX.PROPERTY or REMAX.REALTY.
To help brand owners protect their trademark rights, ICANN has created a “Trademark Clearinghouse” to act as a repository for validated trademarks. Registering a mark with the Clearinghouse will enable a trademark owner to register the corresponding mark in the new top level domains during prescribed “Sunrise Periods.” More specifically, during at least the first thirty (30) days before the general public is allowed to register domain names in a new top level domain extension, Clearinghouse rights holders will be permitted to register domain names containing exact representations of their trademarks.
The Clearinghouse also will serve as an “alert” system, notifying those trying to register a domain name that they may be infringing a trademark. If the domain name applicant proceeds with its registration, the owner of the mark registered with the Clearinghouse will be notified. The trademark owner will then have the option to challenge the domain name through various legal measures at additional costs. Such measures include filing a complaint under ICANN’s longstanding Uniform Domain Name Dispute Resolution Policy (UDRP) or through ICANN’s proposed Uniform Rapid Suspension system (similar to the UDRP, but a more cost-effective and streamlined way of resolving disputes).
Inclusion in the Clearinghouse comes at a cost and certain criteria must be met: namely, the trademark holder must prove it owns a valid registration of its mark, show proof of use, and submit a declaration attesting to these and other facts relating to ownership and use. ICANN recently published the fee structure for the Clearinghouse and the base rate per mark will be $150/per year. It is expected ICANN will begin accepting submissions for the Clearinghouse in the next few months. ICANN has commissioned the Deloitte accounting firm to handle the financial payments associated with the Clearinghouse, and technology giant IBM will operate the actual database.
Given the changing and expanding Internet landscape, those concerned about the misuse of their brands should be thinking about registering their marks with the Clearinghouse. For those companies who have not yet applied to register their marks with the Trademark Office, it is not too late to do so now. Dykema’s trademark and domain name experts are closely monitoring all developments and can answer any questions you may have.