Currently there are approximately two dozen generic top-level domains (gTLDs) in use on the Internet. A gTLD is an Internet extension such as .com, .net, or .org. For example, www.sideman.com is a combination of one of the existing gTLDs (.com) and a second-level domain “sideman.”
Beginning in 2013, it is expected that there will be a number of new gTLDs – possibly hundreds of them. With the anticipated expansion of the Internet name space, there are new opportunities and risks for rights holders. This Legal Alert provides a general overview of the new gTLDs, the altered online landscape expected to emerge in 2013, and the steps rights holders can take to protect their intellectual property in this evolving online environment.
The New (Anticipated) gTLDs
In 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) – the entity responsible for introducing and promoting competition in the registration of domain names, while ensuring the security and stability of the domain name system – authorized the launch of the new gTLD program. Following the launch of the program, businesses, entrepreneurs, and communities around the world applied to register and operate new gTLDs. In June 2012, ICANN announced that it received over 1900 applications for new gTLDs. Examples of the proposed new gTLDs include .amazon, .love, .nike, .soccer, .tokyo, and .wine. You can view the entire list of applied-for new gTLDs by visiting http://newgtlds.icann.org/en/program-status/application-results/strings-1200utc-13jun12-en. Currently, the applications for new gTLDs are in the “initial evaluation” phase which is expected to last until mid-2013.
Each applicant for a new gTLD has also applied to run the registry for the new gTLD (by way of example, Verisign is currently responsible for all the domain names registered in the .com top-level domain). What this means is that once the new gTLDs are operational, if a company wants to register a second-level domain with one of the new gTLDs (e.g., .wine, assuming it becomes operational), the company will have to comply with the rules and pay the appropriate fees that each particular registry (e.g., for .wine) has established in order to obtain the domain name registration.
Objection Period To The New gTLDs
In order to protect certain rights and interests (e.g., a company’s trademark rights), the new gTLD program includes an objection period. During the objection period, which is currently open, a rights holder can lodge an objection called a “legal rights objection” to a proposed new gTLD if it appears that the applied-for gTLD infringes the rights holder’s existing trademarks. Legal rights objections must be filed by March 13, 2013 with the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center. Following the close of the objection period, those objections received will move through a dispute resolution process (similar to an arbitration) administered by WIPO that is expected to take place during 2013.
If you are concerned that one or more of your trademarks is potentially infringed by a new gTLD, please contact us as soon as possible so that we can advise and assist you through the objection process if necessary.
Trademark Clearinghouse For Registered Trademarks
The new gTLD program also includes a “Trademark Clearinghouse” that is expected to be operational in 2013. The Trademark Clearinghouse is designed as a mechanism for rights holders to protect their trademarks in the second-level domains when the new gTLDs are in place. Once the Clearinghouse is operational, a rights holder will be able to submit information to the Clearinghouse about its registered trademarks. The Clearinghouse will then serve as a single database of authenticated registered trademarks from all over the world. It is anticipated that the filing fee for authenticating and validating a trademark through the Clearinghouse will be approximately $200 per submission.
Once the new gTLDs are operational, all new gTLD registries will be required to use the Clearinghouse data to ensure that certain mechanisms to protect trademark rights are applied to all new domain name registrations – namely, (1) a “sunrise” period for trademark owners to register their own second-level domains first; and (2) a trademark claims period where a trademark owner is allowed to contest an attempted registration of a second-level domain.
The Sunrise Period: During at least the first 30 days before general registration of second-level domain names opens for a new gTLD, operators of the new gTLDs will be required to provide a sunrise period. During the sunrise period, rights holders can register domain names containing exact matches of their trademarks before the general public has a chance to register domain names in the new gTLD. The Clearinghouse is intended to facilitate this process. With a number of new gTLDs potentially launching at the same time or within days of each other, the Clearinghouse will make it easier and more efficient for new gTLD registries to verify trademark information during the sunrise periods.
The Trademark Claims Period: During at least the first 60 days that registration of second-level domain names is open for a new gTLD, operators of the new gTLDs will be required to provide a trademark claims service. The trademark claims service is intended to provide notice to a prospective registrant of a new second-level domain that the proposed domain name may infringe a trademark registered with the Clearinghouse that is an exact match. If the prospective registrant proceeds with the domain name registration, despite the notice that it may be cybersquatting, the rights holder will be notified of the domain name registration. If a rights holder then wants to contest a second-level domain name that it believes infringes its trademark rights, a rights holder will have to file a complaint with WIPO through a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding or through ICANN’s proposed Uniform Rapid Suspension (URS) system (which is currently in the process of being set up and is intended to be a more cost-effective way to resolve domain name disputes with the new gTLDs than the existing UDRP process).
The sunrise and trademark claims periods are only designed to protect exact matches of trademarks registered with the Clearinghouse. If a rights holder wants to protect variations, combinations, or misspellings of its registered trademarks, it will have to wait until each new gTLD operator opens registration to the public and then attempt to register the domain names before potential cybersquatters do.
We can advise and assist you through the process of submitting registered trademarks to the Clearinghouse, handling sunrise and trademark claims, determining appropriate steps to protect registered trademarks during the general registration phases, and enforcing your trademark rights through the various dispute resolution procedures.
What This Means For You
With the expansion of the online landscape expected to take place in 2013, companies should review their intellectual property portfolios now, consider the implications of an expanding online marketplace for their business, and budget for the enforcement of trademark rights through the various mechanisms and processes set forth above.
After you have had a chance to review this Legal Update, we welcome you to contact one of our attorneys in the Intellectual Property Group to discuss your company’s unique circumstances and positioning with regard to the introduction of the new gTLDs.
