As early as next month, the first of nearly 2,000 new generic top level domains (gTLDs) could begin being made available to the public at the rate of 20 per week. A gTLD is the suffix of web addresses, which generally address the subject matter of that domain. The Internet Corporation for Assigned Names and Numbers (ICANN) has been working for years to increase the number of available gTLDs beyond the 22 familiar .com, .net, .biz and .info gTLDs and the 250 country codes. This latest expansion is unprecedented in number and will add more generic terms (e.g., .hotel, .auto, .food, etc.) and for the first time brand-specific terms (e.g., .amazon and .nike). A full list of the proposed new gTLDs organized by category may be found at the New gTLD Site here.
With the launch of the new gTLDs is the heightened concern that third parties could register and establish domain names and websites using the gTLDs that incorporate legitimate business names, trade names and trademarks of others. For example, a registrant could attempt to appropriate the well-known Nikon camera name and mark by registering www.nikon.photography. To address these concerns and implement protective measures for trademark owners, ICANN has established the Trademark Clearinghouse. The Clearinghouse is a centralized repository of validated trademark rights. Trademark owners who record (register) their marks will have their claims of trademark rights verified by Deloitte’s authentication and validation services and included in a database maintained by IBM, both under contract with ICANN.
Benefits of Recording in the Trademark Clearinghouse
The three main benefits of recordation for trademark owners are as follows: First, those owners will have the opportunity to reserve their mark-specific domain names for at least the first 30 days during the Sunrise Periods for the new gTLD (meaning the initial launch phase of each gTLD) before other members of the public may register domain names within that gTLD. In fact, only those with marks recorded in the Clearinghouse will be able to register during the Sunrise Period. Second, registrants will receive at least 30 days’ notice before each new gTLD goes live. Third, during the Trademark Claims Service period (at least the first 90 days after a new gTLD is available to the public), any third party attempting to register a domain in the new gTLD that exactly matches a recorded mark will be warned about the owner’s rights in the mark before registration is granted. Ideally, the registrant would abandon its domain name application once it learns of the owner’s claim to the mark. However, if the registrant proceeds with registering the domain name, the Clearinghouse will notify the mark owner of the registration but will not take any adverse action against the registrant on the owner’s behalf.
Limitations on Clearinghouse Recording
The registration process only allows for registration of and protection against new domain names that are identical to registered marks. The registration is not available for unregistered marks or marks that are the subject of a pending application. Due to the identical match requirements between marks and the domains, owners will have no Clearinghouse protection against commonly misspelled versions of the marks, plurals, shortened marks, etc. Since trademarks from many jurisdictions can coexist in the Clearinghouse, it is possible that conflicts will arise between legitimate mark owners with rights who have met the Clearinghouse recordation guidelines through different avenues.
Mechanics and Limitations of Registering
To record a mark with the Clearinghouse, owners must submit an application, the applicable fee and proof of use. Recordation is generally only available for (1) text-only marks registered on the U.S. Patent and Trademark Office’s Principal Register or with another national trademark office, (2) court-validated marks and (3) marks protected by statute or treaty. Not all trademarks are eligible. Trademarks containing a dot (such as amazon.com) and state-registered marks are not eligible. Special rules apply to symbols that are not recognized in domain names such as @ and &.
The Clearinghouse opened on March 26, 2013, and will remain open throughout the duration of the launch of the new gTLDs. This could be as early as May or June 2013 and will last until the last gTLD is launched (that could be as late as 2015 or thereafter). In order to take maximum advantage of the Clearinghouse and have opportunities to register their marks during the Sunrise Periods for the first gTLDs to be released later this spring, trademark owners should consider early registration. The first gTLDs to be released are those in non-Latin script. For example, the second gTLD set to launch is the gTLD Amazon is launching with the Japanese characters that mean .store.
Who Should Record Marks in the Trademark Clearinghouse
Trademark owners should determine if they wish to file to (1) protect their marks in any of the roughly 1,900 gTLDs or (2) defensively prevent any third party from registering any of its trademarks as a domain name with a new gTLD (e.g., .suck., .porn). However, if a trademark owner desires to file any domain name that corresponds to its mark during the Sunrise Period of any gTLD, the only way to be able to make that filing in the first days of the gTLD launch is to register its mark in the Trademark Clearinghouse. Owners must weigh the costs and benefits in determining whether to record/register marks in the Trademark Clearinghouse and whether to file to protect or block a domain name.
It is important to remember that recording in the Trademark Clearinghouse does not create or enhance legal rights. But it does give trademark owners the ability to monitor the rollout of the new gTLDs and to file offensive and defensive domain name applications. There are limits to the protection however. The Trademark Claims Service is only in effect for at least the first 90 or more day period established by the new gTLD registration. Thus it may be desirable to engage a commercial monitoring service after the Trademark Claims Service period has run.
ICANN’s plans for deploying the new gTLDs are ongoing and subject to change. Trademark owners will want to pay close attention to the ongoing news releases regarding the gTLDs and their Sunrise Periods and to timely file relevant sunrise applications as well as defensive domain name registrations. Please contact your trademark counsel to discuss the options available to you to protect your marks now that the gTLDs will soon launch.
For additional information, please contact Susan Rector at (614) 462-2338 and email@example.com, or any member of Ice Miller’s Litigation and Intellectual Property Group.
This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.