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Trademark Protection in the Age of Expanding Internet Domain Names

09/09/2014 | Fall 2014 Newsletter
The Internet is changing rapidly as ICANN continues to grant rights for the issuance of hundreds of new top level domain name endings. Brand owners should consider additional strategies for protecting their brand names in light of these changing developments in the internet domain space.

The internet is changing rapidly as ICANN (the Internet Corporation for Assigned Names and Numbers) continues to rapidly grant rights for the issuance of hundreds of new top level domain name endings, such as .health, .books, .clothing, .technology, .center, .world, .town, .bank, .land, .builders, .financial, .enterprises, and .fund, and many others.

Brand owners should consider additional strategies for protecting their brand names in light of these changing developments in the internet domain space.

Up until a couple years ago, there were only 22 top level domain name endings, such as .com, .edu. .net and .gov, in addition to specific country code top level domain name endings, such as .ca, .mex, or .uk. In 2012, after considering the issue for many years, ICANN decided to expand the internet universe by accepting applications, in return for a substantial fee of $185,000, for companies to act as registries to issue domain names with new top level domain name endings of their choosing. ICANN received 1930 applications within the application period, for generic terms, geographic terms and brand names, in a variety of languages and scripts. About one third of the applications were for .brand top level domain endings, such as .bmw or .samsung. The remainder were for generic top level domain endings, such as .world, .clothing, or .books. As of September 2014, ICANN has issued rights to more than 500 new generic top level domain name endings, with hundreds more expected to be issued.

The ultimate impact of these new top level domain name endings is unknown, because it is yet to be seen whether internet users will utilize and search for websites with these new top level domain name endings. The danger for trademark owners is that another company will register a domain name which combines the owner’s brand with one of the new generic top level domain name endings. Various mechanisms are available for trademark owners to attempt to monitor and block such actions.

TRADEMARK CLEARINGHOUSE
Trademark owners can register their mark with the newly created trademark clearinghouse database, for a fee of $150 per mark per year, which will give the trademark owner the benefit of a sunrise period and a notice period. During the sunrise period, the trademark owner will have a 30-day exclusive period, before the general public, to register a domain name which combines the owner’s mark with a new top level domain name ending. During the 90-day notice period, after expiration of the sunrise period, any third party who attempts to register the brand with a new generic top-level domain name ending will see a screen that notifies the third party that the brand is subject to trademark registration, and will give the brand owner a notice that the third party has registered the domain name.

DOMAIN WATCH SERVICES
If a trademark owner simply wants to be notified that another company has registered a domain name which contains the owner’s brand, the owner can use a private domain name watch service, which typically costs the same or less than registration with the clearinghouse, and provides notice beyond the 90-day post-sunrise period provided by the clearinghouse.

DONUTS
An enterprising private company, named Donuts, has applied for the rights to act as the registry for more than 300 new top level generic domain names. Donuts offers a service to trademark owners under which Donuts will agree not to issue a domain name with the owner’s brand name (combined with any of the new top level generic domain names which Donuts now owns) for a five to ten year renewable period (referred to as a “block”) for a fee of about $3,000 per year.

STREAMLINED DISPUTE PROCEDURE
ICANN has added an additional procedure, called the URS (Uniform Rapid Suspension System) for a trademark owner to challenge cybersquatters. For many years, ICANN has provided a dispute resolution mechanism called the UDRP (Uniform Domain-Name Dispute- Resolution Policy), which provides a relatively quick procedure for a trademark owner to challenge cybersquatters and to obtain the rights to the domain name, if the trademark owner prevails and proves bad faith. The new URS procedure is quicker and entirely online, although it only allows the trademark owner to suspend the cybersquatter’s application, and does not allow the owner to actually obtain ownership of the domain name.

About the author: David T. Azrin is a partner at Gallet Dreyer & Berkey LLP. Mr. Azrin represents a range of business clients and individuals on employment, trademark, and franchise law matters. Mr. Azrin is the sponsor of the International Franchise Association’s franchise business network program in the New York City area, and has been named one of the top franchise attorneys (“Legal Eagle”) in the United States by the editorial board of Franchise Times magazine. Mr. Azrin can be reached at dta@gdblaw.com.