The core group of generic top-level domain names (gTLDs) such as .com, .info, .net and .org is set to expand significantly over the next few years. The process has already begun, as seven new gTLDs were made available to the general public on 29 January 2014, with many more set to follow in the coming months.

In 2008, the Internet Corporation for AsTMsigned Names and Numbers (ICANN), the body responsible for managing domain names, began a process designed to introduce hundreds of new gTLDs. During the application window, which opened in January 2012, ICANN received around 1,930 applications for new gTLDs. These include brand names such as .amazon and .apple, geographic names such as .london and .amsterdam, and other more general names such as .app and .baby.

Around 230 of the new gTLD’s applied for were contested, meaning that more than one application was filed for the same name. The most popular included .app, .inc, and .home.

ICANN will not approve applications for names that are identical or would result in confusion, so these applications are unable to proceed until the conflict is resolved. In most cases this will be through mutual agreement between the parties or through an auction. Nevertheless, many uncontested gTLDs are now reaching the final stages of the process, with the first few having already been released, and many more expected to be available to the general public later in 2014.

With the introduction of hundreds of new generic top level domain names, many trade mark owners will be wondering how they can protect their rights and prevent any number of new domains containing their trade marks from being registered.

TRADE MARK CLEARINGHOUSE

Opened on 26 March 2013, the Trade Mark Clearinghouse allows trade mark owners to record their registered trade marks, marks validated by a court (e.g. UK passing off rights confirmed by a court), and marks protected by a statute or treaty (e.g. protected designations of origin). They can then take advantage of a pre-registration “Sunrise Period”, giving them an initial period of at least 30 days in which to register domains which correspond with their trade marks, before domains for each new gTLD are open to the general public.

To assist trade mark owners in preventing third parties from registering a domain name that is an identical match to a mark registered with the Clearinghouse, there is also going to be a Trade Mark Claims Service.

The potential registrant of such a domain will receive a warning notice. If they choose to continue with registering the domain, the trade mark owner will receive a notification so that they can decide whether to take further action. This could involve domain name dispute resolution (UDRP), an out-of-court dispute resolution mechanism designed to resolve cases of bad-faith and abusive use and/or registration of domain names, or the new Uniform Rapid Suspension (URS) discussed later in this article.

Trade mark owners should note that these notifications will only be triggered by exact matches and will only be sent for the first 90 days from the launch of the gTLD to the general public.

DOMAINS PROTECTED MARKS LIST

Larger domain registries are looking at offering their own protection mechanisms for trade mark owners.

Donuts Inc., a registry which applied for over 300 new gTLDs, has launched the Domains Protected Marks List to protect registered trade marks.

The protection offered is slightly broader than Clearinghouse and allows trade mark owners to record a range of different strings or combinations of words which correspond with their registered trade marks, providing the trade marks have first been registered in the Trade Mark Clearinghouse. The registered marks and related terms will then be blocked from being registered as domains. The block will apply across all of the gTLDs operated by Donuts Inc.

UNIFORM RAPID SUSPENSION

Trade mark owners will be able to continue using UDRP (Uniform Domain Name Dispute Resolution Policy) to pursue cases of cybersquatting.

However, there will also be the option of URS (Uniform Rapid Suspension). This should enable trade mark owners to quickly and easily suspend a domain which infringes their trade mark. Within 24 hours of receiving a complaint, the registry operator will “lock” the domain and restrict any changes such as the transfer or deletion of the domain names. If the complaint is found to be justified, the domain could remain suspended for the remainder of its registration period.

COMMENT

As so many of the new gTLDs will be open to the general public, concerns have been raised as to a possible increase in abuse of trade mark rights. However, until the first few gTLDs are launched it will be difficult to fully anticipate the effect they will have. For the time being, trade mark owners should make themselves aware of the new processes in place to safeguard their rights. They should also consider monitoring the release of the new gTLDs to see whether any are particularly relevant to their area of interest.