April 29, 2013
The internet will soon expand to include hundreds of new top-level-domains (TLDs) (examples of TLDs as we know them today include .com, .net. and .org – i.e., the term that is to the right of the "dot"). In fact, over 1,900 applications were received by ICANN (the internet's governing body) from entities who want to run their own TLD registry. While many of these applications were filed by brand owners, the majority of the TLD applications are for generic terms, such as .app, .inc. and .law – just to name a few. While it is still uncertain when the first TLDs will launch, there is one thing that is clear: the launch is inevitable.
Unlike TLD launches of the past, a new TLD registry owner will not be the one holding all of the cards for determining what process trademark owners can go through, if any, to protect their rights or secure a domain name in the new TLD registry. Trademark owners will be able to take advantage of a central repository system, known as the Trademark Clearinghouse. The Trademark Clearinghouse will be a mandatory inclusion in the pre-launch process of any new generic TLD, as well as mandatory checkpoint once new domain names are registered. While this is certainly good news, the down side for our U.S. clients is that only those marks that have been federally registered will be eligible for deposit within the Trademark Clearinghouse – not common law marks; not state registrations; and not domain names. That being said, the benefit for federal trademark owners will be three-fold:
1. Sunrise Service
In order to participate in the sunrise period of any new TLD on the basis of prior trademark rights, a trademark owner must have its trademark registration deposited with, and validated by, the Trademark Clearinghouse. This means that for any generic TLD that is attractive to a trademark owner's business, trade, or industry (e.g., .food for our clients in the food and restaurant industry), taking advantage of the Trademark Clearinghouse will allow you to seek the domain name identical to your registered trademark (yourmark.TLD).
2.Trademark Claims Services
Each and every new TLD registry will be required to check new domain name registrations against the trademark registrations that have been deposited with the Trademark Clearinghouse. As such, if another entity or individual seeks a domain name registration that is identical to the trademark deposited with the Trademark Clearinghouse (e.g, yourmark.app), you will receive notice of that domain name registration and take appropriate action if warranted.
3. Uniform Rapid Suspension (URS)
Registration with the Trademark Clearinghouse can be used to support URS claims. The URS will be a counterpart to the Uniform Domain-Name Dispute-Resolution Policy ("UDRP") and is designed to handle the "clear cut" cases of cybersquatting and infringement. It is also purported to be a faster and less expensive version of the UDRP. However, URS claims will only be available to trademark owners who have had their rights "validated." As such, the registration process with the Trademark Clearinghouse will have eliminated the need for this validation step.
Unlike some recent standalone TLD launches, which critics denounce as having been accompanied by much hype only to fall by the wayside just after a year (e.g., .xxx, .tv, and .co), this new era is more than a single TLD launch. Rather, we are about to witness the launch of potentially hundreds of new TLDs. Indeed, we are standing at the brink of a new internet era, the reach and effect of which we cannot predict. Moreover, leaving a trademark out there to be picked up as a domain name in an unprecedented number of TLDs cannot only erode the goodwill associated with a trademark, but it can also impact the legal budget of a business due to costly after-the-fact enforcement actions.
Taking advantage of the Trademark Clearinghouse provides some very practical benefits. A trademark owner will not be faced with the mind numbing and pocketbook depleting prospect of defensively registering domain names in hundreds of new TLDs. While taking advantage of the sunrise services will be attractive and viable for trademark owners for certain TLDs, it will obviously not be ideal for all. However, taking advantage of the Clearinghouse will ensure notification of domain name registrations that may infringe upon your rights, allowing a trademark owner to act quickly and engage the URS claims service if necessary.
Frost Brown Todd is recognized as an official Trademark Agent by the Trademark Clearinghouse, which allows us to deposit trademark registrations on behalf of our clients and other federal trademark registration holders. We also stand ready to discuss an appropriate strategy for more complex trademark portfolios, and advise as to alternative options that may be available for those brand owners who do not hold federal registrations for marks of concern.
 Very few exceptions apply, such as with marks validated by court decree.