Trademark owners will be profoundly affected by the introduction of new generic top level domains. Abuse and protection of marks in domain names has long been a concern for brand owners and the complexities are about to increase exponentially. The trademark and IP faction has been very active in the ICANN process, and several protection mechanisms have been added to New gTLDs which are not present in the existing top level namespaces.
Protection at the Top Level – Right of the Dot
Unfortunately, the window of opportunity for trademark owners to apply for and operate their own Top Level Domain for this first round has closed. Dates for subsequent application rounds are not yet determined but ICANN has pledged to begin shortly after these first new gTLDs are finished and the process has been evaluated. It is possible the next round may begin in as few as two to three years.
The list of applicants for New gTLDs has been published. Check the list. If you have rights to any of the Top Level applied for strings, the only mechanism available to you at this point is the ICANN objection process. Visit the link for objection process and fee details.
Protection at the Second Level – Left of the Dot
The majority of concern for trademark owners in New gTLDs is at the second level. Second level domain names are the characters that come to the LEFT of the dot. In the domain name ‘newgtldsite.com’ , newgtldsite is the second level name. Risks are that brand names will be registered by bad actors and used to the harm of the rights holders. To help brand owners navigate this area are two Rights Protection Mechanisms. These are Trademark Sunrise and the Trademark Claims Service.
Trademark Sunrise is a required launch phase that each New gTLD must execute to give rights holders the opportunity to register or block their trademarks under the TLD before making names available for general registration. You should subscribe to a watch service for each new tld to know when those periods will commence and the policies and pricing surrounding that phase for each new tld.
The Trademark Claims Service will notify brand holders of attempts to register their mark(exact match only) in the new tld as well as notify registrants attempting to register the name that it may be infringing. This service will last only sixty days after general availability for each new top level domain.
Both these mechanisms are facilitated by the Trademark Clearinghouse. The Trademark Clearinghouse is a database of registered trademarks that will be maintained as a single point of reference for use by all new tlds. Though details and pricing for registration in the Trademark Clearinghouse is not yet known, this tool will help brand holders to protect their marks across all new tlds.
Post Launch Solutions
Policing internet domains for potential trademark abuse has been a costly matter for many rights holders. The New gTLDs have afforded new mechanisms through which brand owners can more effectively enforce their rights online. The existing Uniform Domain Dispute Resolution (UDRP) allows rights holders to secure transfer of second level names that are clearly infringing. Additionally a new process will be introduced to help brands quickly dispense of cybersquatters. The URS (Uniform Rapid Suspension) is designed to be a less expensive yet more expeditious method to halt a website that abuses your rights.
The final implementation of these mechanisms has yet to be determined. Trademark owners are encouraged to monitor the New gTLD developments to stay informed of their options with regard to protections.