Law and Technology

Generic domain names pose threat

August 12, 2014
Print
Text Size:
A A

.com, .net, .org, and .gov have been a part of our online experiences for years now. Though we are familiar with existing Internet domains using these suffixes, the landscape is changing — and fast.

New suffixes have and will become available at a rapid pace, causing concern for trademark infringement. These new suffixes — also known as generic Top-Level Domains or gTLDs — are the part of the web address to the right of the period and offer a wide variety to those hoping to register for a website. The new suffixes include: “.clothing” “.ventures” and others. Second level domain names are also at risk — the names just to the left of the TLDs that often identify a brand, whether as a company name or a product line.

This is an exploding marketplace, with more than five times as many gTLDs available now than at the end of last year. For instance, one single registry company (a company that sells domains) called Donuts Inc. launched seven new domains alone at the beginning of the year. More than 1,000 other domains may also be launched over the coming months and years through numerous other registry companies.

All of this change online spells threats to trademark holders.

Who issues domains?

ICANN, an internationally organized, not-for-profit corporation, issues these domains. It allows singular and plural forms of domains to exist at the same time — so, as an example, if “hotel” and “hotels” both are active this year, there is great potential for confusion online.

You may think that because you have registered your trademarks with the U.S. Patent and Trademark Office, or through various state or other registries, that your trademarks are protected. In fact, new domains create new potential risks to your trademarks.

Using the Clearinghouse

One of the simplest things you can do to start the process of protecting your rights is register in the Trademark Clearinghouse during the gTLD expansion. The Clearinghouse is a centralized location of authenticated registered trademark information; it verifies trademark data and maintains a database of the information once verified. There are two benefits to registering with the Clearinghouse: access to upcoming Sunrise Periods (the phase before the launch of each new gTLD), and notification from the Claims Service when a domain name identical to an existing registered trademark is registered.

Sunrise periods

Those registered trademark owners who have already registered their marks in the Clearinghouse are allowed the first choice of domain names that correspond to their trademarks within the new gTLDs during a given sunrise period. A sunrise period is at least 30 days, as dictated by ICANN.

Domains are awarded at the end of the sunrise period, and an auction will be conducted if attention is needed to address scenarios of multiple applications for the same domain names.

After the sunrise period expires, the new gTLDs become available for general members of the public to register domain names that remain unclaimed.

Claims service

Participation in the Clearinghouse may also have the effect of deterring someone from registering a domain, if he receives notice of an existing trademark. During the claims period (the initial operating period of at least the first 90 days for general registration, which follows the sunrise period), anyone trying to register a domain name that matches a trademark recorded in the Clearinghouse will receive notification of the trademark. If the person notified still registers the domain name, then the Clearinghouse will notify the trademark owner that someone has registered the domain name that matches the owner’s trademark. The trademark owner can then consider whether to take other action. There is a fee for the Clearinghouse registration, but it may be less expensive than fighting over a domain name later.

Jumping into the game late

Even though some sunrise periods have already launched, there are still reasons to register trademarks in the Clearinghouse, as additional new gTLDs will continue to launch. Trademark owners should review the list of gTLD applicants, and consider next steps, including whether any objection to a gTLD or domain name is prudent to protect rights in the trademark.

Owners should also consider periodic reviews of potentially conflicting uses of confusingly similar trademarks, including a review of trademarks used in domain names.