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January 27 2014

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

By: Kimberly M. Large

Trademark owners should be aware of increased potential for trademark infringement from the implementation of new generic top-level domains (“gTLDs”), as well as many second level domain names (the names just to the left of the TLDs that often identify a brand) registered under the new gTLDs.  Progress continues with respect to the launch of gTLDs that appear at the end of Internet addresses (for instance, .com and .net), and are used to direct traffic online.*

One of the approved Domain Name Registries (Donuts Inc.) for new gTLDs already launched a Sunrise Period for seven new gTLDs, including .clothing, .ventures, and others.  This Sunrise Period ran until January 24, 2014.  Others have and will follow as additional new gTLDs launch.    

The Internet Corporation for Assigned Names and Numbers (ICANN) has established various options for trademark owners to protect their rights during the gTLD expansion.  One of those mechanisms, the Trademark Clearinghouse, is a centralized location of authenticated trademark information.  There are two benefits to registering with the Clearinghouse:  access to Sunrise Periods, and notification from the Clearinghouse (Claims Service) when a domain name identical to an existing registered trademark is registered. 

Owners of registered trademarks who have already submitted to and had their trademarks validated by the Clearinghouse are able to participate in Sunrise.  Those registered trademark owners who have registered in the Clearinghouse are allowed the first choice of domain names within the new gTLDs during Sunrise (with the domains awarded at the end of the Sunrise period, and an auction to address scenarios of multiple applications for the same domain names).  After the Sunrise period expires, the new gTLDs become available for general members of the public to register domain names.

The Clearinghouse Claims Service may have the effect of deterring someone from registering a domain, if they receive notice of an existing trademark.  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. 

Even though some Sunrise Periods have already launched, there are still reasons to register trademarks in the Clearinghouse, as additional new gTLDs will continue to launch.  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.

*For additional background, see earlier article entitled Developments in the New Generic Top-Level Domain Names: Increasing Threat to Trademark Rights.