March.19.2013
Starting on March 26, 2013, there will be an important new tool available to help trademark owners combat unauthorized uses of their trademarks in domain names as more than 1,000 new generic top-level domains (“gTLDs”) prepare to launch.
Currently, there are only 22 gTLDs in operation, the most well-known being .com, .org, and .net. But starting this year, perhaps as soon as April or May 2013, new gTLDs that have been in the works for years are finally set to get under way. Applications for new gTLDs include extensions such as .app, .auto, .bank, .energy, and .shop. That means that more than 1,000 new gTLDs may go into effect, and with them the possibility that others may register new, unauthorized domain names under different gTLDs (for example, <BRAND.shop> or <BRAND.app>). For trademark owners, obtaining defensive domain name registrations or monitoring all these new gTLDs for infringing domain name registrations may be overwhelming.
A new tool called the Trademark Clearinghouse will make the process more efficient and manageable for proactive trademark owners by allowing them to submit qualified trademarks to a central repository as a tool to help protect their marks. The Clearinghouse will allow the mark holders to take advantage of two important services: the Sunrise Registration Service and the Trademark Claims Service.
The “Sunrise” period is the window of time after a new gTLD launches, but before registration is open to the general public, when trademark owners can register domain names that match their marks. Only those marks the Clearinghouse has verified, and for which owners have provided proof of use, are eligible for Sunrise registration.
Sunrise registrations are only for domain names that are identical matches to the Clearinghouse trademarks, and they are not available for even slight misspellings such as plural variations of those marks. For gTLDs that are likely to be popular, registration of key brands through this method may be worthwhile.
The Trademark Clearinghouse’s second important benefit is called the Trademark Claims Service. The Claims Service will work both as a deterrent to potential unauthorized applicants and a watch system for trademark owners, at least within the first 60 days after a new gTLD registry opens registration to the public. During that time, any application for a domain name that is identical to a mark recorded in the Clearinghouse will trigger an alert to the applicant of the potential conflict. The Claims Service will not block the application, but if the application goes forward, the service will alert the trademark owner to the domain registration. The trademark owner can then determine whether it wishes to take enforcement measures to try to obtain or suspend the domain name.
Trademark owners should consider the benefits and costs of the Trademark Clearinghouse before deciding which, if any, of their marks to submit.
The Clearinghouse allows mark holders to use Sunrise registrations and provides an efficient way to monitor unauthorized uses in all gTLDs. The scope of the Trademark Clearinghouse is somewhat limited, however, in that it covers only identical matches to trademarks, not slight variations. It is also limited in time, as the Sunrise period only lasts for the first 30 days of the registration period, and the Trademark Claims Service may only last 60 days after the launch of a new gTLD, with the option of the new gTLD registries to extend those time periods.
The Trademark Clearinghouse will cost $150 for a one-year registration, $435 for three years, and $725 for five years. That fee includes registration and verification of the trademark record, Sunrise services, trademark claims services, and linking 10 domain names to the registration.
Because this expansion of gTLDs is unprecedented, it is difficult to predict the importance of brand enforcement in this new space, and the cautious route may be the better one, at least for key brands. For more information on the Trademark Clearinghouse, or for advice on developing a brand enforcement strategy in light of the new gTLD launch, please contact one of our trademark lawyers.