Mar 27 2013

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is currently overseeing a process by which new generic top level domains (“gTLDs”) will be made available to the public. The new gTLDs include generic terms such as .law and .auto and brand-specific terms incorporating well-known trademarks. The new gTLDs may be available for registration as soon as April 23, 2013. Thereafter, more gTLDs will be made available on a staggered basis.

The introduction of the new gTLDs means that many new domain names will become available for registration, including by cybersquatters. Thus ICANN has established mechanisms aimed at protecting the rights of trademark owners.

The first such mechanism is the Trademark Clearinghouse. The Trademark Clearinghouse is a repository of validated trademark information. The recordal of rights with the Trademark Clearinghouse will permit trademark owners to more easily challenge the registration of infringing or confusing domain names. To record a trademark with the clearinghouse, the owner of a registered text-only trademark must submit an application and a fee. The Trademark Clearinghouse opened on March 26, 2013 and will remain open during the approval process for the new gTLDs.

The main benefit of recording a trademark with the Trademark Clearinghouse is that the owner may participate in the “sunrise” period for each new gTLD, which will occur before the public launch of each gTLD. During the sunrise period, trademark owners whose rights have been recorded with the Trademark Clearinghouse may register domain names corresponding with their registered trademarks before others.

Recordal of rights with the Trademark Clearinghouse also permits trademark owners to benefit from Trademark Claims Periods, which occur after each new gTLD is launched. If, during such a period, an unauthorized party attempts to purchase a domain name corresponding with a trademark that has been recorded with the Trademarks Clearinghouse, the party will be notified of the trademark owner’s rights. Also, if the party registers the domain name irrespective of this warning, the trademark owner will be notified of the domain name registration. The trademark owner then can challenge the domain name registration and/or any activity on the corresponding website.

Please contact us if you would like to register trademark rights with the trademarks clearinghouse or if you have any questions regarding the new gTLDs.

This article is for information purposes only and does not constitute legal or professional advice.

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Tags: Domain Names, ICANN, Trademarks