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Re:Marks on Copyright and Trademark

New gTLDs & The Trademark Clearinghouse: Four Tips for Brand Owners

By Ryan Compton & James Stewart

The imminent launch of more than 1,400 new generic top-level domains (gTLDs) poses a major challenge to brand owners seeking to enforce and maintain control over the way their key trademarks appear in domain names. The domain ender “.com” is the most widely used of the current gTLDs, but “.net,” “.org” and “.edu” gTLDs are also prevalent. All of the current gTLDs are managed by the Internet Corporation for Assigned Names and Numbers (ICANN). On June 20, 2011, ICANN approved a plan to expand the universe of gTLDs to include virtually any string of characters, including trademark words (e.g., “.docs,” “.rocks,” “.world,” “.pepsi,” etc.).

To help brand owners exercise greater control over use of their trademarks, ICANN has developed the Trademark Clearinghouse (TMCH), which gives brand owners the first opportunity to obtain domain names incorporating their trademarks upon the launch of a new gTLD. Brand owners registered with the TMCH will receive notice when a third party registers a domain name incorporating their trademark. The third-party registrant is also notified of the brand owner’s rights in the mark.

This expansion of the list of available gTLDs, and its implications for brand owners, have been hot topics within the legal and branding communities since ICANN approved the expansion program. In June 2012, ICANN announced 1,930 applications had been submitted for 1,409 unique gTLDs.

The availability of new gTLDs has both thrilled and terrified brand owners. The prospect is thrilling because new gTLDs will provide brand owners with new, more specific domain names and opportunities for consumer recognition. The terror comes from the daunting prospect of monitoring and enforcing trademark rights with respect to the new gTLDs, and the costs involved in registering second-level domain names within each new gTLD. Second level domains are what we typically think of as the company identifier or trademark portion of a domain (i.e., the “dlapiper” portion of www.dlapiper.com). Brand owners need to at least consider the prospect of registering their trademarks at the second level for any new gTLDs (e.g., “dlapiper.docs,” “dlapiper.rocks,” “dlapiper.world”).

The first new gTLDs will be available this summer. Before they launch, brand owners should take proactive measures to protect their IP, especially trademarks. The TMCH is a valuable resource to this process, and should not be overlooked.

About the TMCH

Opened on March 26, 2013, the TMCH is a central database run by Deloitte and IBM into which trademark holders may submit evidence of their trademark rights. Holders of valid national or international trademark registrations for word or design marks are eligible to register with the TMCH. Trademark applications, sub-national registrations (such as state trademark registrations) and IP rights that cannot be represented within the technical limitations of the domain name system (such as patents, designs or figurative marks) are not eligible. To register, trademark holders must identify their key trademarks and submit their contact information, along with the trademark registration particulars of the selected marks.

Advantages/Disadvantages

The first advantage of the TMCH is the right to acquire second-level domains for trademarks in new gTLDs during the sunrise period – the 30-day period after a new gTLD launches, during which trademark owners registered with the TMCH may purchase second-level domain names for the new gTLD before the name is made available to the general public. To take advantage of this period, a trademark owner must provide evidence of use of the relevant trademark.

The second advantage of the TMCH is the trademark claims period. During the first 90 days (or longer, depending on specific gTLD policies) following the sunrise period, the trademark owner will be notified when any third-party seeks to register a second-level domain name identical (or nearly identical) to a mark registered with the TMCH. During that process, the registry also notifies the gTLD registrant about the trademark owner’s rights in the mark.

However, while the TMCH is helpful, it is not perfect. It does not alert brand owners to registrations incorporating confusingly similar marks. Accordingly, brand owners cannot be complacent. Given the numerous gTLDs coming into existence, trademark enforcement in second-level domain names will become far more challenging for brand owners. To take full advantage of the TMCH, brand owners must register their marks with the TMCH prior to the launch of the first new gTLDs this summer. Moreover, it is essential to work with your IP team to craft a comprehensive strategy that will provide maximum coverage in this rapidly evolving online landscape. Brand owners will find additional benefit by continuing to monitor new gTLDs through watch services covering second level domain name registrations that may be confusingly similar to their marks.

 Four Tips for Brand Owners

  1. Check the list of new gTLDs to identify potential threats and opportunities.
  2. Budget and plan your brand’s registration and objection strategy.
  3. Register key trademarks with the TMCH prior to the launch of new gTLDs this summer.
  4. Monitor TMCH notices, similar domain name registrations and gTLD launch dates.

 

Ryan Compton, Of Counsel in DLA Piper’s Trademark, Copyright and Media group, has extensive experience in online IP protection. He is based in Washington, DC. Reach him at [email protected]

James Stewart is a law clerk in DLA Piper’s Trademark, Copyright and Media group, based in Washington, DC.

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