The Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit corporation responsible for managing the domain name system, is evaluating more than 1,900 applied-for generic top-level domains (gTLDs), such as .art, .insurance, and .music, as part of its new generic Top-Level Domain Program. ICANN is expected to begin approving and delegating the new gTLDs in April 2013, which will result in the largest expansion of the Internet domain name system since the 1980s.

The introduction of new gLTDs was intended to increase competition and choice in the domain name space. However, the gTLD expansion will also present new challenges to trademark owners in protecting their rights and preventing cybersquatting. Trademark owners already have to monitor for use of marks with .com, .net, .biz and other standard gTLDs, as well as all the country codes. Adding hundreds of new gTLDs will only make policing rights more expensive and time-consuming for brand owners.

To combat these concerns, ICANN established new brand protection mechanisms, including the soon-to-be launched Trademark Clearinghouse, as well as new dispute resolution procedures.

Trademark Clearinghouse

The Trademark Clearinghouse is the most important rights protection mechanism built into the new gTLD program. It allows trademark owners to submit trademark data into one centralized database, rather than with each new gTLD registry. To record a trademark with the Clearinghouse, trademark owners must submit an application and the appropriate fee.

Once verified, trademark owners can take advantage of two services:

  1. Sunrise Service. The "Sunrise" period is an initial period of at least 30 days in which trademark owners have the opportunity to register their marks as domain names in advance of the general public. Trademark owners can utilize this service to safeguard against the award of domain names to third parties that match their trademark.
  2. Trademark Claims Service. This notification service warns both trademark holders and potential domain name registrants of possible infringement. If the potential registrant continues to register the domain name after receiving notice, the trademark owner may then take appropriate action, including use of the Uniform Rapid Suspension system discussed below, to protect its rights.

The Trademark Clearinghouse is set to launch on March 26, 2013. It will remain open throughout the delegation of the new gTLDs. Although subject to change, the current fee for recordation of one mark is $150 per year. As noted, this fee will cover all of the new gTLDs. Trademark owners will not need to record their rights with each new registrar.

Because it will provide a streamlined, effective solution to protecting trademark rights, the Trademark Clearinghouse should prove to be an incredibly valuable tool to brand protection in the new gTLD landscape. As such, trademark owners should review their portfolios and strongly consider recording their marks with the Trademark Clearinghouse.

Dispute Resolution

If a third party proceeds with registering a domain name despite receiving notice through the Trademark Clearinghouse mechanism, the trademark owner remains responsible for challenging the domain registration. One new procedure for doing so is the Uniform Rapid Suspension system (URS).

The URS is a quick, low-cost alternative to filing a dispute under the existing Uniform Domain Name Dispute Resolution Policy (UDRP). Like UDRP, the URS is intended for clear-cut cases of trademark abuse. In addition, it allows for the suspension of a domain name for the duration of the registration period, plus an optional additional year. For a trademark to receive protection under the URS, the mark must have been eligible for inclusion in the Trademark Clearinghouse and the owner must provide proof of its use of the mark.

In addition to the URS, trademarks owners will also be able to utilize the new Post Delegation Dispute Resolution Procedure (PDDRP), which provides a procedure for objecting to a registry whose conduct in the operation or use of its gTLD causes or contributes to trademark abuse.

Assistance Going Forward

With the introduction of new gTLDs, the landscape for brand protection and trademark enforcement has significantly enlarged. Holland & Knight's Intellectual Property Team can help you sort out these issues, take advantage of the opportunities available and protect against the risks posed by the domain name registration and maintenance process associated with issuance of the new gTLDs. We also can provide legal services that are specifically designed to meet your domain name registration and trademark protection needs, including coordination of domain name and trademark watch services, domain name escrows and transfers, domain name lockdown services and domain name consulting services. In addition, we can help brand owners take advantage of the new brand protection mechanisms and protect valuable trademark rights on the World Wide Web.