Business Counselor April 24, 2013

Developments in the New Generic Top-Level Domain Names: Increasing Threat to Trademark Rights

Trademark owners should be aware of increased potential for trademark infringement from the implementation of new top level domains. Generic Top-Level Domains (“gTLDs”) appear at the end of Internet addresses (for instance, .com and .net), and are used to direct traffic online. In 2012, the Internet Corporation for Assigned Names and Numbers (“ICANN”) completed a registration period for corporate applicants to seek to register custom gTLDs. The applications include a number of industry applicants (for instance, .baby, or .basketball).

In addition to the gTLDs themselves potentially infringing existing marks, many domain names (second level domain names) registered under the new gTLDs could also create potential for infringement of a company’s trademarks.

ICANN has established certain Right Protections Mechanisms for trademark owners to fight infringing domain name registrants. One of these mechanisms (the Trademark Clearinghouse) became available on March 26, 2013. A trademark owner must have a registered mark to use the Clearinghouse, which is useful to provide notice of domain name registrations and applications. The Clearinghouse allows a trademark owner to register its domain name before a new gTLD is publicly available for registration, during a specific Sunrise period. The Clearinghouse may have the effect of deterring someone from registering a domain, if they receive notice of an existing trademark. If they still register the domain, the Clearinghouse will notify the trademark owner that someone has registered the owner’s trademarked domain name. The trademark owner can then consider whether to take other action. There is a fee for the Clearinghouse registration, but it may be less expensive than fighting over a domain name later.

Trademark owners should review the list of gTLD applicants, and contact counsel to discuss potential next steps, including whether any objection to a gTLD or domain name is prudent to protect rights in the trademark. Owners should also consider periodic reviews of potentially conflicting uses of confusingly similar marks, including a review of marks used in domain names.

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