Are You the Master of Your Domain?

Brand owners are about to face new challenges in mastering their domain names and keeping others from using their trademarks online.  You may be most familiar with domain names that end with the extension .com, .org, or .net, referred to as generic top-level domains (gTLDs).  Recently, the Internet Corporation for Assigned Names and Numbers (ICANN) opened up applications for new gTLDs which could include virtually any word as the extension.  ICANN received nearly 2,000 applications for approximately 1,400 unique new gTLD extensions. ICANN’s new gTLD program is expected to substantially increase the number of domain names on the Internet.  So the question is, "Are you the Master of your Domain?"

Brand owners looking to protect their trademarks from being adopted as a domain name registered through one of these new (gTLDs) now have their chance. A new “Trademark Clearinghouse” is now open that allows brand owners to register their marks in a central repository before hundreds of these new gTLDs (e.g “dot brands”) are launched.  In this ever-expanding online space, the Trademark Clearinghouse serves as an additional tool for brand owners to proactively protect their trademarks from those attempting to improperly register a domain name that includes your federally registered trademark.  

The Trademark Clearinghouse will accept and verify federally registered trademarks and trademarks protected by statute or treaty, and every new gTLD registry will be required to use the Trademark Clearinghouse database to provide trademark protection services to brand owners

Most notably, the “Trademark Claims” service will act as a watch service for brand owners. During the first 60 day period after a new gTLD launches, the Trademark Claims service will monitor domain name applications and send a warning to any applicants who attempt to register a domain name matching a trademark registered with the Clearinghouse. If the applicant still proceeds with registering the potentially infringing domain name, ICANN will notify the trademark owner, so the owner has an opportunity to challenge.

The Trademark Clearinghouse also includes "Sunrise Services," which allow participating trademark owners an advance opportunity to register domain names for new gTLD registries (for instance .bank, or .car or .app or .shoes, .retail) in a top level domain before registration is generally available to the public.

Filing fees for registering a trademark with the Trademark Clearinghouse must be paid annually, with discounts available where you prepay for up to five years in advance.  For example, the filing fee for one year is $150, for three years is $435, and for 5 years is $725. Registration of a trademark with the Trademark Clearinghouse includes linking up to ten domain names per registration. Trademark Registrations can be designated for one, three, or five years and are re-validated once each year.

Trademarks can be registered with the Clearinghouse at any point, but those trademark owners who register their marks with the Clearinghouse during what ICANN deems the "Early Bird Registration Period" will be granted extended protection. Trademarks registered during the Early Bird period will not expire on the first anniversary of the registration date, but will instead expire on the first anniversary of the date the Early Bird Registration Period closes.

 

So, what's the moral of this story? The early bird catches the worm.

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© Mari-Elise Taube, Stites & Harbison, PLLC, 2013

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