Protecting Your Brand in a World of New gTLDs

The Internet Corporation for Assigned Names and Numbers (ICANN) recently announced a change to the domain name system that will allow the introduction of new generic Top-Level Domains ("gTLDs"). As a result, along with ".com" and ".net," in the future there may be ".music," ".bank," and ".yourcompanyname" or ".yourmark."

We expect many companies will choose not to apply for gTLDs for their marks. The application fee is $185,000, and there are substantial qualifying requirements and likely significant  additional expenses during the application review process.  For those interested, applications for new gTLDs may be filed with ICANN between January 12, 2012, and April 12, 2012 (there is no "sunrise" period or ability to "reserve" new gTLDs). 

Thus, for most companies, the main concern will be preventing their marks and company names from being used as gTLDs or registered as second-level domain names by others in a new gTLD. You may not want to own ".yourmark," but you may very well need to prevent others from registering ".yourmark" or "yourmark.topleveldomain."

Objections to gTLD Applications

ICANN is providing for an objection period to gTLD applications between April 27, 2012, and November 27, 2012. ICANN will post new applications on its website after April 12, 2012 on an application results page. Trademark owners will NOT be notified by ICANN of any applications for gTLDs containing their marks. It is highly recommended that you review the published applications as soon as possible to determine whether you need to file an objection to a gTLD application. Objections to gTLDs based on prior trademark rights will be administered by the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO). Objections should be filed electronically, and the fees will range from a filing fee of $2,000 to as much as $23,000 to appoint a panel for a single objection to a single application. Rules for these objections are available here. 

Protecting Trademark Owners' Rights in Second-Level Domain Names

Even if someone doesn't register your mark as a gTLD, you still need to be vigilant about third parties registering second-level domains including your mark in any of the new gTLDs. The Uniform Domain Name Dispute Resolution Policy (UDRP) will continue to be available to resolve disputes over second-level domain names registered under any new gTLD. New gTLD registries will also be subject to new procedures to protect trademark owners' rights, including the creation of a Trademark Clearinghouse, a Trademark Claims Service, and a Sunrise Period. Follow this link for information about the Clearinghouse, the Claims Service, and the Sunrise Period.

• The Trademark Clearinghouse
  Trademark owners will be able to register their marks with the new Trademark Clearinghouse – a central repository for trademark information submitted by trademark owners. To register a trademark with the Trademark Clearinghouse, you will submit (electronically) a copy of your registration certificate for the mark (or, for unregistered marks, other proof of ownership), and a declaration including a statement under oath that the mark currently is in use, accompanied by a specimen of the use of the mark (e.g., a picture of the product bearing the mark, or a website shot showing the services offered under the mark). You will have to update the Clearinghouse of any changes in the status of the mark—for example, if a registration is cancelled, or you abandon use of the mark. Failure to do so will result in a penalty. You will also have to periodically renew your information to remain in the Clearinghouse.
  
  The operator of the Trademark Clearinghouse has not yet been chosen, nor has ICANN outlined any associated costs. However, since it is not expected that any new gTLDs will actually be activated before late 2012, there will be plenty of time to determine which marks you may want to register with the Clearinghouse.
  
  
• Trademark Claims Service
  When an applied-for second-level domain name is an "Identical Match" to a trademark owner's mark listed in the Clearinghouse, the Trademark Claims Service will notify the domain name applicant of the trademark owner's claimed rights. It will also notify the trademark owner, but only after the domain name has been registered. The Trademark Claims Service is required to operate during the first 60 days of a gTLD's launch period. Thus, it's advisable for you to register your marks with the Clearinghouse as soon as it is available so that the marks are available for review and claims notices during a new gTLD's initial launch period.
  
  
• Sunrise Period
  New gTLD registries will also be required to provide a Sunrise Period of at least 30 days before their launch. If you register your marks with the Clearinghouse, you will receive notifications when any third party seeks a Sunrise registration for a second-level domain name that is a match to your mark. You may also want to refer regularly to the application results page to determine whether any new gTLDS are approved in which you want to file a Sunrise application for your own marks.

Uniform Rapid Suspension System for Second-Level Domain Names

A new faster and less expensive uniform rapid suspension system (URS) will be available in addition to the UDRP. While the standards under the URS system will be the same as under the UDRP, the URS will have some essential differences:

• The expected cost will be about $300 (with the final amount to be set by the URS provider).
• The prevailing trademark owner will not acquire the infringing domain name; instead it will be suspended.
• The domain name registrant will only have 14 days to respond to a complaint.
• There will be a higher burden of proof (clear and convincing evidence) for the trademark owner.
• If the trademark owner loses the objection at the URS, another action may be filed under the UDRP against the same domain name.

Objections against gTLD Registry's Infringing Use of Mark

Finally, ICANN will institute a post-delegation dispute resolution procedure (PDDRP) against gTLD registries that violate a trademark owner's rights. Trademark owners will be able to bring a claim directly against a registry that uses a string that infringes a mark or against a registry that exhibits a pattern of bad-faith intent to profit from the sale on infringing domain names. (Since no provider has been chosen yet, the procedures outlined in the current Guidebook for the PDDRP are subject to change.)

Thus, registration of your marks with the new Trademark Clearinghouse will be an important step to consider, but continued monitoring of new gTLD applications should also be implemented to protect your valuable marks.

Further specifics regarding the new gTLD application process can be found on ICANN's webpage dedicated to gTLDs. We stand ready to assist our valued clients in navigating this process.