Protect your company’s rights in the race to register new gTLDs

The eagerly anticipated unveiling of the list of generic Top-Level Domain (gTLD) names (the letters to the right of the dot) was revealed in June by the Internet Corporation for Assigned Names and Numbers (ICANN). Historically, only 22 general use-approved TLDs, including .com, .org, and .net, just to name a few, have existed across the web. In contrast, ICANN is now reviewing nearly 2,000 applications for new gTLD to add to this previously exclusive list. This pending expansion is the largest in the history of the Internet since its creation.

While ICANN is reviewing these applications, it is up to companies to make sure an applied-for gTLD is not identical or confusingly similar to their already existing trademarks, service marks or trade names. In addition, companies may want to determine whether any applications pose a competitive threat regardless of similarity. So even if a company did not submit an application, it should review this list (available at http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en)

Plenty of large companies applied to create new gTLDs that reflect their brands and related terms, like .apple or .panasonic. Small and midsize businesses could be impacted in major ways by the pending changes in that the proposed list includes potential new domains like .app (the subject of 13 separate applications, including one from Amazon), .blog (the subject of 9 separate applications, including one from Google), and .cloud (applied-for by Symantec, Amazon and Google).

A single company, Donuts.co, applied for 300 gTLDs, including .accountants, .agency, .architect, .beer, .data, .healthcare, .hotel, .photography and .restaurant, amounting to more than $56 million in application fees. Representative of Donuts.co state that they will make the gTLDs delegated to them available in the same way the .com, .net and other current TLD extensions are made available - via the network of ICANN-accredited registrars to anyone who wants to register them for a fee, the amount of which would be determined by Donuts.co.

An objection-filing period was built into the new gTLD Program as a way for a company to protect certain rights and interests. For example, if someone has applied for a brand or trademark, you can formally object to that application before a panel of qualified experts in the relevant subject area. The objection period for the new gTLDs ends January 13, 2013.

Any company may submit a formal objection if it falls under one of these categories:

  1. String Confusion — meaning that the applied-for gTLD string is confusingly similar to an existing TLD or to another applied-for gTLD string. If two confusingly similar TLDs are delegated this could cause user confusion.
  2. Legal Rights — the applied-for gTLD string violates the legal rights of the objector, such as existing trademark rights or dilution.
  3. Limited Public Interest — the applied-for gTLD string goes against generally accepted legal norms of morality and public order that are recognized under principles of international law.
  4. Community — there is substantial opposition to the gTLD application from a significant portion of the community that the gTLD string is targeting.

In mid-February of 2013, gTLD applicants will be notified of any filed objections and will have 30 days to respond. The process is similar to arbitration, with written submissions by the objector and applicant, as well as an in-person hearing. Fees for formal objection filed will be $10,000 for each party, though the good news for the prevailing party is that it will receive a refund of $8,000 of the filing fee.

Another protection that companies may utilize in the future will be the Trademark Clearinghouse, which is built into the new gTLD program. The Clearinghouse will accept and authenticate the rights of trademark holders in connection with the new gTLDs. ICANN plans to have the Trademark Clearinghouse up and running by late 2012 or early 2013. For trademark owners, the fee for initial authentication and validation services through the Trademark Clearinghouse is expected to be less than $150 per submission.

The Trademark Clearinghouse will be a central repository of trademark information that new gTLD registries can access through their systems. When a person or company attempts to register a second-level domain name (the wording to the left of the dot) in a new gTLD that matches a trademark in registered with the Clearinghouse, they will receive a warning that they may be cybersquatting. If the company proceeds with the domain name registration despite the warning, the brand owner will then be notified of the domain name registration.

The Trademark Clearinghouse is only meant to be a notification system, however, and trademark owners will have to use a domain name dispute resolution process such as a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding or ICANN’s newly proposed Uniform Rapid Suspension (URS) system to contest second-level domain names they feel infringe their trademark rights.

ICANN’s proposed URS system will offer trademark owners a quick and low-cost procedure to take down clearly infringing websites. The proposed URS system will differ from the existing UDRP system in several ways, such as:

  • If the trademark owner prevails in the URS proceeding, the domain name registration will be suspended instead of transferred or cancelled, and will point to a mandatory URS placeholder page for the remaining registration period. Upon expiration of the registration period, the domain name will be open for registration by the trademark owner or any third-party.
  • While the URS system will have a similar set of examination elements to the UDRP (i.e., evidence of bad faith registration and use of the trademark will be required), the trademark owner will have to prove infringement by clear and convincing evidence. Thus, only clear-cut cases of trademark infringement will lead to suspension.
  • Filing fees for initiating a URS proceeding are expected to be less than $500, while fees for initiating a UDRP start at $1,300 for a single member panel and $2,600 for a three member panel for 1-3 domain names.

For more information, visit www.icann.org.

Patchen Haggerty is a partner in Dorsey & Whitney’s Seattle office. Haggerty She counsels, advises and assists clients on a broad range of complex and strategic legal and business matters, including issues relating to trademark, copyright, trade secret, patent, domain name, antitrust, IP due diligence, privacy and Internet security. She has extensive experience in securing and protecting domestic and international trademark, copyright and trade dress rights, and manages a number of global trademark portfolios.

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