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Diversified industrials e-briefing: Internet Domain Names: The new gTLDs and The Trademark Clearinghouse

    • Aerospace, defence and security
    • Automotive
    • Chemicals
    • Industrial engineering
    • Industrials

    17-09-2013

    Précis

    The upcoming launch of new Generic Top Level Domains (“gTLDs”) will introduce new generic domain extensions to rival the traditional “.com” with almost endless new possibilities.

    The initiative has been met with alarm by trade mark owners, who already face the challenge of protecting their brands against abuse by cyber-squatters. The Trademark Clearinghouse has been put in place in response to these concerns.

    What?

    There are currently 22 gTLDs in operation. The current programme, initiated in 2008 by The Internet Corporation for Assigned Names and Numbers (“ICANN”), allows a virtually limitless range of ordinary words, brand names and other strings of letters to be registered as gTLDs. Businesses can register their own brand name as a top-level extension.

    The first of the new gTLDs could go live in October 2013.

    The new gTLDs applied for include ordinary words such as .energy, .solar and .lighting, and popular extensions such as .inc have attracted multiple applications.

    The creation of thousands of new top-level registries will have the knock-on effect of releasing a vast number of new domain addresses for registration. Some new gTLDs will operate on a “closed” basis by allowing only a selected group of registrants to acquire domains under that string, but other “open” registries will allow anyone to register domains under the new bespoke extensions (for example brandA.store and brandB.store). There are fears that this radical expansion will create many new opportunities for abuse.

    The Trademark Clearinghouse

    The Trademark Clearinghouse, launched on 26 March 2013, is one of the mechanisms to address those concerns. Its primary purpose is to create a centralised database of registered and unregistered trade marks that have been accredited by ICANN and to prevent, by reference to that database, the fraudulent registration of domain names consisting of protected marks.

    The Clearinghouse has three main functions:

    1. the registration of a mark at the Clearinghouse “validates” it as being the property of the relevant brand owner for the purposes of the domain name system;
    2. trade mark owners will have the opportunity to register domain names corresponding with their protected marks in a new domain space before those domains are made publicly available, in a “Sunrise period”;
    3. for at least the first 90 days of the life of a new gTLD registry (the “Trade mark claims period”), the Clearinghouse will generate a warning notice if anyone attempts to register a domain name corresponding to a protected mark at the new registry.

    Using the Clearinghouse

    The inclusion of a mark in the Clearinghouse does not create any legal rights. It simply validates pre-existing rights.

    The fee is currently set at US$150 per entry per year, and each Clearinghouse entry must be renewed annually to maintain it.

    Limitations of the Clearinghouse

    The Clearinghouse has a number of significant limitations.

    One key drawback is that it operates on the basis of identical matches only. Its privileges and safeguards will not extend to variations of the protected mark, even if those variations are insignificant as a matter of trade mark law. To illustrate, a Clearinghouse record for the name EVERSHEDS would not give any “sunrise” priority rights or generate alerts in respect of domains such as “evesheds”, “evershed”, or “eversheds-law”.

    Brand owners must also take steps themselves to enforce their rights. They will still face the challenge (and cost) of securing “sunrise” registrations and dealing with domain name abuse.

    So what?

    New gTLD launches are looming and it is essential for brand owners to engage with the new processes. The Clearinghouse has the potential to provide trade mark owners with a valuable and effective tool. The recommendation for all brand owners is to start recording their key brands at the Clearinghouse now and to make allowances in their legal budgets for securing “sunrise” priority registrations.