How Release of New Top-Level Domains Can Affect Trademarks
In June 2011, Internet Corporation for Assigned Names and Numbers ("ICANN") approved the launch of the new generic top-level domain ("gTLD") program that allows for the expansion of gTLDs outside the 22 gTLDs that currently exist (e.g., .com, .net, and .org.). Over the next year, the first 1,200 new gTLDs will be introduced. These gTLDs include suffixes related to specific well-known brands such as .amex, .ford and .microsoft, and generic suffixes such as .store, .cloud and .software.
With the launch of the new gTLDs, brand owners should carefully consider the possibility that parties may register new second-level domains ("SLD") that infringe brand owners' existing trademarks and negatively impact brand equity. An SLD is the term before the "dot" in a web address. For example, "LeClairRyan" is the SLD in LeClairRyan.com. As a result of the new gTLDs, a third party may register a well-known trademark immediately before one of the new suffixes even if the party does not own exclusive trademark rights in that mark (e.g., amex.finance and apple.tablets).
In an effort to enable brand owners to protect their trademarks, prior to and during the launch of new gTLDs, ICANN has launched a Clearinghouse that serves as a centralized repository of trademarks over which parties assert proprietary trademark rights. Brand owners may proactively protect their trademarks by registering the marks with ICANN's Trademark Clearinghouse, which launched on March 26, 2013. The annual cost of depositing a trademark into the Clearinghouse is $150.00, with discounts for volume registrations.
How the Trademark Clearinghouse Works
The Clearinghouse is critical in supporting Sunrise and Trademark Claims services, which will accompany the launch of each new gTLD. These services are critical mechanisms designed to give brand owners an edge in protecting their trademarks.
Each gTLD registry must offer a 30-day Sunrise Period prior to opening the general registration period for new SLDs. During the Sunrise Period, trademark owners who have registered trademarks in the Clearinghouse will be given an advance opportunity to register new SLDs that correspond to the trademarks they have registered in the Clearinghouse.
The general public may seek to register new SLDs when the Sunrise Period expires. Trademark owners who have registered trademarks in the Clearinghouse will be given advance notification during a 90-day Trademark Claims period if a third party attempts to register a SLD that is identical to its trademark. The registry also notifies the domain applicant of the possibility that they are registering a domain that infringes a trademark. If the notified party registers the domain name, the Trademark Clearinghouse will send a notice to trademark owners with matching records in the Clearinghouse, informing them that someone has registered the domain name. The trademark owner can decide whether to contest the domain registration in a domain dispute proceeding.
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