The Internet Corporation for Assigned Names and Numbers (“ICANN”) will revolutionize the online marketplace over the next several months as it releases the first of several batches of new Generic Top-Level Domain Names (“gTLDs”), allowing businesses to expand beyond their traditional “dot com” empires. Rather than confining web addresses to standard domain names such as “.com,” “.org,” and “.net,” ICANN—the non-profit organization that coordinates the global Internet’s systems of unique identifiers—will expand its list of approved domains so that various brands, organizations, and services can begin individualizing their web addresses using new, more unique domains such as “.finance,” “.shop,” and “.college.” The new domains will be introduced in phases, and ICANN will periodically offer opportunities to apply for new domain names in advance of each phase.
This domain name expansion increases competition and choice in registration, but it also threatens brand owners’ ability to protect their intellectual property. ICANN is cognizant of this fact and has created a range of trademark-based “Rights Protection Mechanisms” (“RPMs”) for brand owners.
Clearinghouse Registration and Corresponding Benefits
Protection begins through registration with ICANN’s Trademark Clearinghouse, which allows brand owners to deposit marks that have been registered or court-validated, or are otherwise statute or treaty-protected. Once marks have been validated with the Clearinghouse, owners can use that validation to qualify for sunrise registration periods, giving them a chance to apply for new domain names in advance of the general public. In addition, trademark owners with verified registrations in the Clearinghouse will receive 30 days notice prior to the launch of the Sunrise period for any gTLD registry.
In addition, while the Clearinghouse does not actively block applications that include trademarked brand names or slogans, it does give brand owners the option of receiving Trademark Claim Notices. These notices serve as an alert each time a third party registers a domain name that exactly matches the owner’s registered mark. Notice claims will be sent during the first 90 days of operation for a new gTLD registry.
Dispute Resolution Mechanisms
The Uniform Domain Dispute Resolution Policy (“UDRP”) adopted by ICANN in 1999 to address bad-faith, abusive domain name registrations will still be available as an out-of-court RDM for those wishing to challenge new gTLDs. However, ICANN has also developed a more cost-effective, efficient mechanism to supplement the UDRP: the Uniform Rapid Suspension System (“URS”). Under the URS, a review panel may grant a temporary suspension of a domain name for the duration of the registration period.
Trademark owners will also have the option of pursuing administrative remedies through the Post Delegation Dispute Resolution Procedure (“PDDRP”). Through the PDDRP owners may file an objection against a registry alleged to materially contribute to trademark abuse. This mechanism is intended to serve as a higher-level enforcement tool than the URS, but also comes with a number of procedural hurdles and specific limits on remedies.