“Attention Trademark Owners: The Internet is Expanding” by Maxey-Fisher, PLLC

By now everyone is familiar with the most common generic top-level domains (gTLD); even though many may not have an idea what they are called. A gTLD is the part of an internet domain name that comes after the last dot, such as .com, .net, and .org. However, the gTLD landscape is rapidly growing, bringing new challenges for Trademark owners.

The Internet Corporation for Assigned Names and Numbers (ICANN), which oversees the gTLDs, has begun an expansion that will increase the number of gTLDs from 22 to over 1,300. Examples of new gTLDs include .web, .shop, and .law. The expansion began with ICANN’s January 2014 launch of the first group of new gTLDs. Following this launch, ICANN will release new gTLDs weekly until all of the new gTLDs have been released.

The new domains provide flexibility to businesses and individuals using the internet, but they also raise serious issues for trademark owners. Not only will there be more opportunities for infringement, dilution and other traditional trademark concerns, some of the gTLDs, such as .sex or .xxx, may also create an unwanted connection for some brands. One way to protect a trademark in the wake of these new gTLDs is to register the trademark as a domain under each gTLD. But, this would be prohibitively expensive for most trademark owners. For this reason, several monitoring and policing mechanisms have been developed.

ICANN has developed the Trademark Clearinghouse, which provides an owner of a registered trademark, who can prove the mark is in use, two very important benefits. First, the owner receives an opportunity to register the domain name identical to the registered trademark in new gTLDs during a period of time before the gTLD becomes available to the general public. The period of time open to owners of registered trademarks also registered with the Trademark Clearinghouse lasts a minimum of 30 days and is called the Sunrise period. Second, the owner will receive notification if a third party registers a second level domain (the part before the last dot in a domain name) that is identical to the Registered Trademark. The notifications are provided by the notification service of the Trademark Clearinghouse, which is called the Trademark Claims Service. Trademark Clearinghouse does not actively block any registrations, so Trademark Owners or their representatives must take active steps to respond to any communications from Trademark Clearinghouse.

A company called Donuts, which was one of the three largest gTLD applicants, offers a blocking service called the Domain Name Protected Mark List (DPML). The DPML actively blocks third parties from registering second level domains that are identical to a trademark that is registered with the Trademark Clearinghouse and enrolled in the DPML service. There are a few exceptions to DPML service and the service also only applies to gTLDs owned by Donut so the DPML is not a complete blocking solution.

Trademark monitoring services are another way for the owner of a trademark to receive notice of the registration of any domain names that are confusingly similar to the owner’s trademark. Trademark monitoring services do not provide any benefits beyond providing notice. However, once the he receives notice of the infringing domain registration, a plurality of options are available to the trademark owner. Beyond traditional cease and desist letters and litigation, the trademark owner may also institute a proceeding under the Uniform Domain Name Resolution Policy (UDRP). If the trademark owner is successful in the UDRP proceeding, the infringing domain will be canceled or transferred to him.

A new Uniform Rapid Suspension System (URS) also provides a means for a trademark owner to have an identical or confusingly similar second level domain suspended until the end of the remaining registration period. Post-Delegation Dispute Resolution Procedure (PDDRP) is another dispute resolution procedure that allows trademark owners to file an objection against a registry if its gTLD is alleged to be infringing or to aid in infringement.

While none of the available mechanisms provide a complete solution for a trademark owner, proper planning and use of these mechanisms can provide cost-effective protection for the owner’s Trademark in the new expanding environment of internet domain names.