Impact of New TLDs on Trademarks

Published on 7/29/2013

Beginning in just a few months, Internet real estate is going to expand from the relatively small universe of 270+ generic and country-code top level domain name extensions to literally hundreds of new gTLDs.

Within this new universe, we understand that some companies are worried about the increased expenses that may be required to protect their trademarks and copyrights online.

To help trademark owners learn about preventative measures  to protect their intellectual property rights when new TLDs go live, we reached out to domain industry legal veteran Statton Hammock, VP of Business & Legal Affairs at United TLD and member of leading organizations such as CSIP and the Domain Name Association.

United TLD is one of the new TLD registries introducing domain registration blocking services designed specifically for trademark owners.

Here is what Mr. Hammock had to say about new TLDs and protecting trademarks during the domain name expansion:

“It’s reasonable for many of these companies to fear that new gTLDs will greatly increase their expenses,” said Mr. Hammock, “however, given the robust rights  protection mechanisms required by ICANN for all new registry operators,  trademark owners  will have  far more  tools  at their disposal to fight  infringers than they ever had for .COM or .NET or other previous TLDs. Additionally, some new registries are introducing additional measures on top of ICANN's mandatory requirements.”

“It’s an exciting time for the domain name industry and for consumers who have sought more choice and competition in the Internet name space.  However, protection of intellectual property rights is paramount  to the new gTLD program, so if you are  brand owner, you should take full advantage of these new rights protection mechanisms.”

Below is a detailed summary of both ICANN's mandatory requirements and some of the measures we'll see registries implement to help protect intellectual property in the expanding domain name space.

New ICANN Requirements and Policies  

All new gTLD registries must follow the policies set in the Registry Agreement before they can begin operations. This agreement contains several rights protection requirements including:

  1. Use of a Trademark Clearinghouse (TMCH) – a central repository of verified trademark rights information that’s shared between registries. With the TMCH, trademark holders only have to apply once to be able to protect their trademarks across all gTLDs.

  2. A 30-day Sunrise Period where trademark holders have an opportunity to reserve domain names containing their trademarks prior to general availability. A Trademark Claims Service will also be available to trademark holders for the first 90 days of general registration.

  3. Compliance with several dispute resolution mechanisms including the existing UDRP system. New procedures include “PDDRP”, “RRDRP,” and  “PIC DRP” and a rapid suspension system called “URS." Check out the glossary to learn more about these systems.

Additional Registry Operator Initiated Rights Protection Mechanisms (RPMs)

In addition to ICANN’s mandated requirements, new registries like United TLD are building on those standards  independently to further enhance rights protection.  Here are some examples:

  • Periodic audit of Whois data to identify erroneous contact information and to frequently prompt registrants to maintain accurate registration data.

  • Remediation of inaccurate Whois data, including suspending a domain name.

  • A new Domain Protected Marks List (DPML) that will allow trademark holders to block others from registering domains containing their trademarks.

  • A new “Claims Plus” service for trademark protection. Claims Plus extends ICANN’s trademark claims service for an extended period as determined by the trademark holder.

In addition to these measures, registries like United TLD will have rigorous Terms of Use that will prohibit illegal or abusive activity as well as limitations on domain name proxy and privacy services.

Here are a few simple recommendations from United TLD’s Statton Hammock to help brand owners protect their marks:

  1. Have legal counsel audit trademark portfolios and determine which valued trademarks should be registered in the TMCH then register these marks.

    1. Four types of marks are eligible for inclusion in the TMCH:

      1. Nationally or regionally registered word marks from all jurisdictions

      2. Word marks that have been validated through a court of law or other judicial proceeding

      3. Word marks protected by a statute or treaty in effect at the time the mark is submitted to the TMCH for inclusion

      4. Other marks that constitute intellectual property may be recorded in the TMCH by arrangement with a registry.

  2. Monitor announcements for Sunrise Periods and encourage client to participate in Sunrise Periods for new gTLDs that may be relevant to the client’s business.  Editor’s Note: eNom provides a free Watchlist tool to monitor TLDs

  3. Prepare to receive and monitor any Trademarks Claims Notices issued and be prepared to determine whether actions needs to be taken against any registrant

  4. Consider purchasing addition RPM-related services such as DPML from registries offering such services

  5. Invoke the URS for egregious cybersquatting cases; its quicker and cheaper than UDRP

  6. Monitor ICANN policy developments or ask an domain industry expert

  7. Reach out to registrars and registries directly through their published “Abuse Contact” to report abuse related to trademark or copyright infringement illegal activity.

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