Increase in gTLDs impacts Trademark Holders

Thursday, September 24, 2015

The cyber-landscape is changing. This month, the International Committee for the Assignment of Numbers and Names (ICANN) will expand the categories of generic top-level domain names (gTLDs). These are the letters after the dot in a web address. At present, there are 22 gTLDs, but the ones we’re most familiar with are .com, .net, and .org. Imagine a cyber-world with thousands of different gTLDs. ICANN tells us that this may describe the topography of the Internet in the near future. There might be, for example, .book, .skateboarding, or .midwest. Some of the gTLDs will be in languages other than English, expanding the global flavor of the Web, and they will be released in batches of about 20 per week.

What does this mean for trademark holders? 
At this point we can only speculate how events will unfold. A trademark holder’s defensive actions may depend on how important it considers its online presence. There may be an increase in “cybersquatting,” whereby a company unrelated to a trademark registers a domain name for the purposes of keeping it from the trademark owner or selling it at a higher price to the trademark owner. This will mean that trademark holders will have to increase their level of awareness of what others are doing online. If a company presently monitors the 22 existing gTLDs, imagine the increased time and money required to monitor 2000 gTLDs.

What can I do to protect my trademark online?
ICANN has established a trademark clearinghouse (TMCH) where trademark holders can register their trademarks, but from this vantage point, the clearinghouse alone does not seem to provide enough protection. 
The TMCH will provide registered participants with two primary services:

  1.  a 30-day advance notice of a proposed release of a new gTLD (called the Sunrise Period); and 
  2.  notice within the first 90 days after a gTLD has been released if a third party registers a domain name that matches exactly (with a few caveats) the trademark owner’s mark. But the trademark owner will still have to go through arbitration to attempt to get the domain back. Thus, during those 90 days, the TMCH is merely a short-term watchdog. As we see it, the true value of the TMCH is in the Sunrise Period. This advance notice provides trademark owners the opportunity to register important domains prior to their being released to the public. 

How should I prepare for this change?
Preparing wisely probably means registering your important trademarks in the clearinghouse for at least the first year that these new domains are released. During that year you can get a sense of how the new gTLDs might impact your business. 

What do you need to do to register in the clearinghouse?  
First, identify your most important trademarks. Second, provide proof that the trademark is in use on the goods or services identified in the trademark registration from the U.S. Patent and Trademark Office. Third, you’ll need a signed declaration attesting to use. 

Participating in the TMCH is one part of a prudent domain protection plan. But registering with the TMCH alone will not prevent anyone from using your trademark as a domain name.  Since the TMCH only monitors for the first 90 days after a gTLD’s release, the trademark holder is vulnerable after those 90 days to anyone trying to use its trademark as a domain name or extension. Also, the TMCH alerts the trademark holder to exact name matches during those three months, but those who want to “phish” often use domain names that are similar and not exact matches. 

Berenato & White offers an ongoing monitoring service that extends beyond the first 90 days, and that encompasses near-match wording as well as exact name matches. Companies may also want to defensively register some new domain names. The watchword for this initial period will be vigilance. We are happy to discuss any of these issues further, and will keep you informed of new developments as these ICANN changes occur.

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