Commentary: The new generic top-level domains: protecting your trademarks

Virtual real estate on the Internet is one of the best pieces of property that a business can own. A good website and a simple domain name, such as [yourtrademark].com or [yourtrademark].net, are easy and effective ways to attract and retain business.

A big concern, however, is protecting [yourtrademark].com from improper use. For example, many times a third-party will register a domain name that is either identical or confusingly similar to [yourtrademark].com. If done with unlawful intent, this is known as “cybersquatting.”

Even though you may have registered [yourtrademark].com as an Internet domain name, your customers could get confused by a cybersquatter’s website located at [yourtrademark].org, inevitably resulting in a loss of business when Internet traffic is diverted from your to the cybersquatter’s website. To best prevent this, a trademark owner having a “.com” domain should take steps to ensure that no one has registered her trademark or a confusingly similar variant as a “.net,” “.biz,” “.org” or other Internet domain name.

The three letters appearing to the right of the “dot” in an Internet domain name are called generic Top-level Domains (gTLDs), whereas the text appearing to the left of the “dot,” e.g., the “amazon” in amazon.com, is called the Second-level Domain. Until recently, protecting your trademark against cybersquatting was fairly manageable because there were only 22 gTLDs (e.g., .com, .net, .org) and approximately 300 so-called country code Top Level Domains (ccTLDs), such as “.au” for Australia and “.de” for Germany.

But in June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) announced a new gTLD program, intending to vastly increase the number of gTLDs from the then-current 22. The application window for these new gTLDs opened on Jan. 12, 2012, and closed on April 12, 2012. During the three-month application window, ICANN received 1,930 applications for new gTLDs, despite the $185,000 application fee. This meant that there could have been as many as 1,930 new words to the right of the dot in Internet domain names—words like “insurance” and “bank” and “porn”—all of which were actually applied for, and all of which work just like .com domain names in web browsers and on the Internet.

As of June 4 ICANN had “delegated” 646 of the 1,930 gTLD applications that it received, meaning that those 646 either are now or soon will be available for registration and use on the Internet. Of the rest, approximately 720 are still pending, while the others were either denied or withdrawn.

Trademark owners must thus be vigilant to watch and see if someone attempts to register [yourtrademark].porn or [yourtrademark].sucks because of the harm to their brand that might occur. Similarly, competitors or cybersquatters might get [yourtrademark].bank, [yourtrademark].cars, [yourtrademark].systems or another variant using one or more of the many new gTLDs that are now possible. Note that all of the above examples are part of the 646 new gTLDs that have been delegated by ICANN, meaning that someone either already could have or soon could register one of them as a new gTLDs that incorporates your trademark. And that’s only the 646 that have been currently delegated. Care must also be taken to watch the 720 remaining applications to see which new words to the right of the dot might be approved.

During the 2012 gTLD application window, larger companies such as Apple and Amazon—aware of the dangers that the increase of gTLDs poses to their trademarks—took pre-emptive precautionary measures, submitting their own $185,000 applications to control relevant gTLDs, such as “.apple” and “.amazon.” But if you were not able to do that, here are suggestions for protecting your trademarks in light of all the new gTLDs:

1. Register your trademarks with the U.S. Patent and Trademark Office. Registering your trademarks with the USPTO is always a good idea. In this context, an issued trademark registration is needed for the next step, registering your trademark with ICANN’s Trademark Clearinghouse.

2. Submit your registered trademarks to ICANN’s Trademark Clearinghouse. This permits you to take advantage of so-called “Sunrise Periods,” during which domain name registrars (like GoDaddy) must give “first dibs” to a particular domain name to a rights holder whose registered mark is in the TMCH. Rights holders with marks in the TMCH receive notice when an applicant applies for a gTLD using their trademark, permitting the rights holder to act, if warranted.

3. Watch for the opening of Sunrise Periods and advise implicated domain name registrars (like GoDaddy) of your TMCH filings to make sure your trademark is protected with respect to that domain name.

4. Watch for the opening of “General Availability” periods during which anyone may register a new domain name at registrars like GoDaddy, and register new gTLD domains that invoke your trademarks—hopefully BEFORE a competitor or cybersquatter does.

5. Act quickly to invoke either the Uniform Rapid Suspension System (URS) or the Uniform Domain-Name Dispute-Resolution Policy to attempt to recover or stop the use of domain names that invoke your trademarks.

Here is an example of the above principles at work, based on the fact that the new gTLD .sucks is currently in a Sunrise Period. Assume you have the trademark “Bloxon” registered with the USPTO. You should submit that trademark registration to the TMCH, after which you would want to advise a domain name registrar that is offering the .sucks domain of your TMCH filing BEFORE the Sunrise Period ends for that domain at 8:01 p.m. EDT on June 19. If you fail to do that, you should be prepared to register the bloxon.sucks domain name when General Availability opens at 8:01 p.m. EDT on June 21. And if that fails, you can try to recover bloxon.sucks from the guy who got it using the URS or the UDRP.

Brad Frazer is a partner at Hawley Troxell, where he practices Internet law, publishing law and copyright law. He is a published novelist and a frequent author of Internet content. He may be reached at [email protected]. Pat Fackrell is a 2015 summer associate at Hawley Troxell, working in the firm’s transaction and litigation departments. Pat is a rising third year law student at the University of Idaho and is chief articles editor of the Idaho Law Review. A version of this column originally appeared in Idaho Business Review, sister publication to The Daily Record.