Internet Expands as New Top Level Domains Go Live; Trademark Clearinghouse Protections Triggered

The Internet continues to expand, as the rollout of new Generic Top Level Domains (“gTLDs”) by the Internet Corporation for Assigned Names and Numbers (“ICANN”) continues. Now is a good time to make sure that your brand strategies include protection on this new Internet frontier.

In previous client alerts, we discussed how registering trademarks in the ICANN Trademark Clearinghouse (“TMCH”) can lead to additional protection for registered marks and give brand owners an edge in obtaining Second Level Domains (or “domain names”) during the Sunrise Periods for the new gTLDs. See “Trademark Clearinghouse Adds To Brand Protection,” April 13, 2013.[1] As many new gTLDs launch over the next few months, brand owners should consider taking advantage of the TMCH procedure.

This is also an opportune time for brand owners to review their Internet strategies. Several new gTLDs opened this week for general registration, with more coming online every week. So brand managers should be on the alert and ready to apply for desired domain names within those gTLDs. For example, general domain name registration opened on January 29, 2014 for the following: .GURU, .VENTURES, and .HOLDINGS. In addition, some new gTLD operators are offering “blocking services” for trademarks registered in the TMCH; the block will prevent third parties from obtaining domain names for specified registrations. The Patton Boggs Intellectual Property Trademark team is ready to help brand owners register with the TMCH and review blocking and other legal strategies for protecting marks as this new gTLD frontier opens.

Background: New Generic Top-Level Domain Program

Until now, there have been a limited number of gTLDs, such as .com, .org, and .net. ICANN’s gTLD program will lead to over 1,000 new gTLDs, such as .book, .tech, .ventures, and numerous others. With so many new gTLDs being introduced, brand owners should evaluate the new gTLDs to determine whether to obtain domain names in these new gTLDs. For a complete list of new gTLDs that have been approved by ICANN to “go live”, see the list here.

The new gTLDs will give brand owners opportunities to align their online presence with their desired brand identity. Brands will be able to enhance their communication with consumers and customers, and participate in this significant Internet evolution.

At the same time, the new gTLDs bring an increased risk of trademark infringement, cybersquatting, and the creation of fraudulent or “spoof” websites. These dangers make it important for brand owners to consider protecting their marks by registering them with the TMCH and/or by exploring “blocking” strategies, which are offered by some domain name registries.

TMCH Protections Available for Mark Owners

Registration with the TMCH gives brand owners certain significant protections:

• Early Registration during Sunrise Periods: Each new gTLD registry must offer a “Sunrise Period” of at least 30 days before the registry opens for general Second Level Domain applications. During the Sunrise Period, owners of nationally or regionally registered marks that are also registered with the TMCH can register those marks as domain names before the registry opens to the public.
• Trademark Claims Service Notice: The Trademark Claims Service will notify a Trademark Clearinghouse registrant if anyone purchases a domain name that is an identical match to its registered mark. This notice period was originally for 90 days after the opening of the registry, but it has now been extended indefinitely. This is a significant advantage, as it will enable brand owners to take protective action to avoid infringement or cybersquatting.
• Warning Notices: The Trademark Clearinghouse will send a warning notice to a new domain name registrant who obtains a domain name matching a registered mark. Warning notices are sent to the domain name registrants for 90 days after the opening of general domain name registrations for each new TLD.
• Domains Protected Marks List (“DPML”): Donuts, an Internet domain name registry that applied for over 100 new gTLDs, offers a “blocking” service across its TLDs for trademarks registered with the TMCH. There are some limitations, and a sizable fee. According to Donuts, its “DPML helps protect mark holders against cybersquatting at a fraction of what it would cost to defensively register the same term(s)” as domain names in each Donuts Top Level Domain.

To take advantage of the Sunrise Periods, brand owners should consider registering their marks now with the TMCH. TMCH registration is not mandatory for trademark protection, however. Like any other member of the general public, a brand owner will still be able to register its trademarks as Second Level Domains (subject to availability) after the Sunrise Periods, although it will lose the priority that the Sunrise Period affords. Brand owners will also continue to be able to challenge infringing domain names through court actions or other dispute resolution procedures.

TMCH Limitations

It is important to note that Trademark Clearinghouse registration has some significant limitations, including:

• A Trademark Clearinghouse registration does not prevent a third party from obtaining a domain name that includes a registered mark. To prevent anyone else from getting a domain name incorporating a mark, the brand owner must register the domain name first or, for Donuts-controlled gTLDs, enroll in the Donuts DPML blocking service.
• In general, only nationally and regionally registered marks are eligible for Trademark Clearinghouse registration. A common law or unregistered mark is eligible only if the mark has been validated by a court or is protected by a statute or treaty. All trademarks submitted to the Trademark Clearinghouse for registration are independently validated prior to TMCH registration.
• To obtain a domain name registration during a Sunrise Period, an applicant must provide proof of actual use of the mark. Proof of actual use can be submitted during the TMCH registration process.
• The Trademark Clearinghouse provides protection only against exact matches. For example, the TMCH will not send notifications of plural or sound-alike domain name registrations.
• Only words in marks are eligible for registration; design marks and graphic or design elements are not eligible for TMCH registration.
• Marks that include any of the existing top level domain names (such as .com) or that include a dot (“.”) are not eligible for TMCH registration, unless the “dot” functions as punctuation or an abbreviation.
• TMCH registration will not prevent an infringer from obtaining an infringing domain name. But it will give the brand owner notice of the new, infringing domain name. Then the brand owner will need to take further action to protect its mark.

New gTLDs Are Launching

Many new gTLDs are now in the Sunrise Period and will be launched this year. Among the new gTLDs in current Sunrise Periods are:

• .careers
• .computer
• .company
• .construction
• .contractors
• .directory
• .enterprises
• .management
• .menu
• .sexy
• .solutions
• .systems
• .technology
• .training
• .voyage
• .みんな– Japanese for "everyone"

Some new gTLD registries have announced Sunrise Periods opening throughout 2014. Many additional gTLDs are expected to launch in 2014 and beyond, across multiple business and interest categories. In addition to generic TLDs (as in the list above) and branded TLDs (such as .LOREAL and .SAFEWAY), London, New York and other cities intend to launch geographic gTLDs (.LONDON and .NYC), to attract consumers and businesses.  Other gTLDs are interest-based or community-based, such as .DEMOCRAT and .GAY.  The availability of these and other gTLDs will dramatically change the landscape of the Internet.

Registering Your Mark in the TMCH

The Trademark Clearinghouse is a vital resource for brand owners to protect their marks during the rollout of the new gTLDs. Brand owners interested in priority registration of their marks as new domain names during Sunrise Periods, or in receiving notification of unauthorized third party domain name registrations, should consider registering their marks with the TMCH. Registrations are available for one, three, and five year periods. The basic TMCH registration fees per mark are $150/1 year; $435/3 years; and $745 for 5 years (TMCH agent and/or legal fees are additional). ICANN is expected to permit additional applications for TLDs in the future, although no dates have been announced yet. TMCH registration thus will likely provide enhanced trademark protections for many years.

The Patton Boggs Intellectual Property Trademark team would be pleased to discuss strategies for helping brand owners register their marks with the Trademark Clearinghouse, increase their brand assets, and prepare for the new gTLD revolution.