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IP Frontiers: Internet domain names and the trademark clearinghouse

Shahrokh Falati

Shahrokh Falati

The Internet Corporation for Assigned Names and Numbers now allows companies to operate new Generic Top-Level Domains (gTLDs). ICANN’s forthcoming launch of approximately 1,400 new gTLDs will greatly expand current availability of domain names, offering brands and businesses new avenues for promoting themselves online.

That is, other than .com, it will be possible to register for e.g., .shop, .travel, .cars, .app, .computer, .shoes, .medicine etc. Therefore, companies may wish to stay ahead of this development and register names related to their business e.g., nissan.cars, jimmychoo.shoes, samsung.computer, pricechopper.food, etc.

In effect, there is likely to be an unlimited number of new second level domains becoming available, often on a first-come, first-served basis. This raises opportunities for brand owners and cybersquatters alike. Owners of valuable trademarks need to consider strategies to protect their rights on the Internet because this new development will no doubt provide new opportunities for cybersquatting, brand misappropriation, and possible registration of unwanted defamatory domain names.

For example, a supermarket may want to register its primary mark in the .food gTLD, a car company in the .cars gTLD, and companies and advocates for causes who have been targeted by derogatory/defamatory websites, may want to register defensively in the .sucks gTLD.

To help brand owners protect their trademarks in the new gTLDs, a new Trademark Clearinghouse has been established. Trademark owners can submit their registered trademarks (excluding state registrations) into this centralized, global repository with the aim of protecting their brand online.

Registration with the Trademark Clearinghouse will provide for several advantages, as will be detailed below. The first new gTLDs is expected this fall. If you are a trademark owner, there is little downside to early submission of your marks to the Clearinghouse. The Clearinghouse will accept one year, three year, and five year registrations.

Trademark holders can submit their registration applications directly to the Trademark Clearinghouse or through authorized agents, and our law firm can assist clients with these registrations. Private watch services are also available as an alternative to registration with the Trademark Clearinghouse.

The Trademark Clearinghouse will support two programs designed to help trademark owners protect their marks in the new gTLDs: Sunrise registration periods and Trademark Claims notifications.

Sunrise Registration: Under the sunrise period, trademark holders will have an advance opportunity of at least 30 days to register domain names corresponding to their trademarks that are registered with the clearinghouse. This opportunity to register domain names is available to the trademark holder before it becomes available to the general public and any third party wishing to register that name.

The strategy to register or not register may be defensive (to stop others), or as part of an active business development strategy to utilize a new web address corresponding with an existing trademark. For example, Pricechopper.food, Liaauto.cars, etc.

Trademark Claims: The Trademark Claims period follows the sunrise period. This stage will run for at least 90 days and during this period, anyone attempting to register a domain name matching a trademark that is registered with the clearinghouse will receive a notification from the clearinghouse regarding the relevant trademark held by the trademark owner.

If that third party then ignores this notice and moves forward with seeking registration of the domain name, the Trademark Clearinghouse cannot and will not stop the third party registering the domain name. Instead, the Trademark Clearinghouse will notify the owner of the trademark, directly or through their legal counsel, that a third party is seeking registration of a domain name that matches their trademark.

At that stage, the decision is with the trademark owner: he/she can do nothing or can oppose the newly registered domain name via established ICANN arbitration procedures or in court.

If a brand owner decides to forego registration with the Trademark Clearinghouse, all is not lost as traditional remedies against infringing domain names, such as Uniform Domain-Name Dispute Resolution Policy (UDRP) arbitration proceedings and court action, will continue to be available.

Domain names registered under the new gTLDs can also be challenged under a new Uniform Rapid Suspension System (URSS). This new URSS complements the existing UDRP by offering trademark holders, in cases of clear infringement, a cost-effective, expedited procedure by which to seek a remedy.

However, whereas a remedy under the UDRP can be cancellation of an infringing domain name or assignment of the infringing domain name to the trademark holder, under the URSS, the sole remedy available to the trademark holder is limited to suspension of the infringing domain name for the remainder of the registration period.

As opportunities develop, brand owners need to work closely with their Intellectual Property Law attorneys and remain aware of the mechanisms that are available to help them defend their trademarks against potential infringers. Separately, these changes provide for opportunities that executives may wish to be kept apprised of in order to make better, more informed decisions concerning strategies for business growth and higher profit.

Shahrokh Falati is an associate with the law firm of Heslin Rothenberg Farley & Mesiti PC, and can be reached at sf@hrfmlaw.com, or at (518) 452-5600.