Number of Top Level Web Domains to Expand – Are Your Trademarks Protected?

Currently, we all navigate to a website by typing a second level domain name (SLDN), e.g. “microsoft”, “amazon”, or “ebay” followed by one of a relatively small handful of top level domains (TLD’s), such as, “.com”, “.gov”, or “.biz”.  However, the number of TLD’s is going to grow exponentially with more than 1900 new “dot blanks” having already been applied for.

Many of these TLD’s are going to be allowed and then introduced over the next two to three years, with the first “tranche” possibly coming out in July of 2013.  Just like the “land grab” of the mid 1980’s for SLDN’s at the beginning of the .com TLD, those with websites or planning one are now going to have to be concerned with the possibility of scammers and cyber squatters attempting to compromise their exclusive SLDN rights. A listing of all 1900+ applied for gTLD’s can be seen at the following link:  https://gtldresult.icann.org/application-result/applicationstatus/viewstatus

In order to hopefully prevent a chaotic and costly repeat of that history, the Internet Corporation for Assigned Names and Numbers (ICANN) – the organization responsible for managing the internet’s systems of unique identifiers and for keeping the internet running smoothly – has created the “Trademark Clearinghouse” (TMCH).   The TMCH was created to help minimize the problems of squatters/ interlopers interfering with the SLDN rights of registered trademark holders.  However, trademark owners have to file with the TMCH in order to obtain notice of the introduction of a new TLD.

Thus, if an SLDN is based on a trademark that is in use but it is not registered, a registration should be considered.  The next step, or first step if the mark is already registered, is to file with the TMCH.  The TMCH provides a “sunrise” program that gives a trademark owner that has filed with them at least a thirty day notice of the introduction of a new TLD so that they have ample time to object to the TLD or to register for a SLDN in that new TLD ahead of everyone else.  After that sunrise period has elapsed, trademark owners that have filed with the TMCH will also then be provided with a notice of a filing by another of an SLDN identical to their trademark in a newly online TLD.  That notice will give the trademark owner an opportunity to then contest that domain registration.  Filing a trademark with the TMCH will cost $150 per year, however the TMCH will only provide alerts for registrations that are, as stated, identical with the mark that has been filed with them.

Private domain alert providers exist and offer to provide trademark owners notice of registration of SLDN names that are not only identical but that are also similar to their mark as well.  Some of these alert service companies will also file in the TMCH so that the trademark holder will have the benefit of the sunrise service and the broader based alerts.  The cost for filing with the TMCH and a private alert service will be about $250 per year and should be continued at least for the three-year TLD introduction period.  Many SLDN holders will then want to continue with an alert service indefinitely because of the ongoing potential for registration of the same or similar SLDN’s in the new TLD’s.  It will no doubt be debated for some time whether or not this rapid and large expansion of TLD’s is a good idea, but what will not be debated is that it will impose further costs on owners of websites and trademarks.

 

For additional information or assistancer, contact intellectual propoerty attorney Sten Hakanson in Foley & Mansfield’s Minneapolis office at 612-338-8788.

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