New gTLDs - What can you do to protect your brand?

Wednesday, 24th July 2013

Introduction

The world is on the cusp of the largest expansion of the Internet domain name landscape since the 1980s.

The Internet Corporation for Assigned Names and Numbers ("ICANN") is currently examining more than 1,900 applications for new generic top level domains ("gTLDs"). gTLDs are the suffix at the end of a domain name (e.g. .com, .org, .net etc.).

When the "New gTLDs" are launched in the coming months, the list of gTLDs will be extended to include gTLDs that describe the nature of the website (for example, .accountant, .legal and .university are awaiting approval by ICANN). There will also be more specific brand identifiers (for example, .apple, .volkswagen and .amazon are awaiting approval by ICANN). Only four New gTLD's have been approved so far, none of which are in English. The remainder of the New gTLD's await ICANN's approval before they can be launched. 

Some New gTLDs will be exclusive to specific organisations. Attempts to register blatantly bad faith applications for New gTLDs will fail. For example, Microsoft could not register .apple, nor could Audi register .volkswagen.

Whether or not the dominance of the .com suffix comes to an end, the introduction of New gTLDs presents new opportunities and challenges for brand owners. While businesses can take the opportunity to enhance online brand identity, there is also greater opportunity for cybersquatting, especially at the second level of the New gTLD (to the left of the dot - e.g. "ashfords.law"). Brand owners therefore need to devote more time and cost to monitoring and policing their rights.

What brand protection mechanisms already exist to combat these concerns?

The Trademark Clearinghouse

ICANN introduced the Trademark Clearinghouse in March 2013, as a relatively inexpensive means of recording proprietary trade marks in a centralised, authenticated database. By applying to the Trademark Clearinghouse, trade mark owners will not need to register their marks in a number of different databases as the New gTLDs are introduced. The current application fee for one year's registration for one trade mark is US$150. This registration period is extendable.

The benefits of applying to record your trade marks at the Trademark Clearinghouse are threefold:

1. Sunrise service
A "sunrise period" will proceed the launch of each New gTLD. This comprises a period of at least 30 days prior to the launch (depending on the gTLD registry), where those that have registered their trade marks with the Trademark Clearinghouse will be eligible to apply for registrations at the second level of the New gTLD domains, corresponding with their registered rights before the application procedure is opened up to the general public.

So, to use the example above, if Ashfords records the trade mark 'Ashfords' at the Trademark Clearinghouse, it would be eligible to apply for the domain addresses "ashfords.law" and "ashfords.legal" at least 30 days before the official launch of the .law or .legal New gTLD.

2. Conflict warning service
If, immediately following the sunrise period, a third party attempts to register a second level New gTLD domain address which is identical to the mark recorded in the Trademark Clearinghouse, the third party will receive a notification of the rights asserted in the mark in question. The notice will put the recipient on formal notice of the rights registered at the Trademark Clearinghouse. gTLD registries are required to offer this service for at least 90 days following the end of the sunrise period.

For example, if an individual attempted to register "ashfords.law", then that individual would be sent a notification, formally putting them on notice of Ashfords' registered rights in the mark 'Ashfords'.

3. Claims notification service
If, having received a notice from the conflict warning service, an individual continues with the registration of a second level New gTLD domain address, which is identical to the mark recorded in the Trademark Clearinghouse, the trade mark owner will be notified of the registration, in case they wish to contest it.

Dispute Resolution Procedures

If an objectionable second level New gTLD domain address is successfully registered, responsibility for challenging the registration falls on the trade mark owner.

All of the New gTLDs will be subject to ICANN's Uniform Domain Name Dispute Resolution Policy ("UDRP"). The UDRP provides a means for rights owners to obtain the transfer of a domain name which has been registered and used in bad faith by a party that has no legitimate rights or interests in that domain name, which is identical or confusingly similar to a trade mark owner's mark.

In addition, ICANN is introducing a faster, more efficient system to address obvious cases of trade mark abuse - the Uniform Rapid Suspension System ("URS"). The only remedy available for a successful claim under the URS will be the temporary suspension of the domain name (e.g. "ashfords.law)" for the duration of the registration period of the domain in question, with the option of a one year extension at the successful claimant's discretion.

ICANN has not yet nominated a service provider for the URS.

Conclusions

Do not underestimate the impact that the launch of the New gTLDs may have on your business. It is inevitable that a greater number of gTLDs will result in an increase in cases of cybersquatting. Recording your trade marks at the Trademark Clearinghouse is a sensible way of reducing instances of cybersquatting on domain addresses that include your trade marks.

If you have not already done so, register your trade marks. By registering your rights now, you will have a stronger means of legal objection if your business is the victim of cybersquatting