It’s hard to believe something as new as the Internet would have a nostalgic, simpler time already, but there are major changes coming this next year.
Manufacturers looking to protect a brand or product name could get the job done with a few defensive registrations on the familiar .com, .org and .net.
Starting in October 2013, the Internet will grow to encompass 1,930 more Generic Top-Level Domains (gTLD), the part of the domain to the right of the “dot.”
The Internet will include industry terms such as .cloud, .search, .app and .tech; geographic terms such as .london, .berlin, .africa and .nyc; and brand names such as .chevrolet, .bridgestone and .toshiba.
Clearly, a more robust strategy is needed to protect trademarks, brands and other intellectual property.
This summer, the Internet Corporation for Assigned Names and Numbers (ICANN), the private entity responsible for managing the global domain name space, signed the first four contracts to launch new generic top level domain name registries (gTLDs).
Hundreds more will follow over the next few months as ICANN completes the process of reviewing and approving the initial 1,930 applications filed in by a wide range of businesses, communities and associations.
Our focus here, however, is the challenges presented at the second level – the space to the left of the dot.
Left of the Dot
In the existing .com world, enforcement proceedings and defensive registrations to protect trademark rights have become a common but unwelcome cost of doing business.
This burden will only grow with the launch of hundreds of new gTLDs and the possibility of almost unlimited opportunities for abusive domain name registrations in conflict with a company’s brands.
Relying on the purchase of all domain possibilities incorporating your trademark (as well as logical typos) on more than 1,000 gTLDs is simply not practical or possible with most budgets.
Manufacturers will need to adopt a strategy for meeting this looming challenge that includes the following three steps:
- File trademarks in the trademark clearinghouse.
- Register desired marks and names in the new TLDs.
- Create an effective enforcement plan.
Trademark Clearinghouse
The Trademark Clearinghouse is a database for recording existing trademark registrations and evidence of use.
The Clearinghouse is now open for recording trademark rights in connection with the launch of new gTLDs.
The Clearinghouse offers three key benefits:
A recording in the Clearinghouse is required to participate in “Sunrise registration” in the new gTLDs. Essentially, Sunrise is an opportunity for trademark holders to secure matching domain names in a new registry before it is open to the general public.
Recording in the Clearinghouse is also required for IP claims notices. These notices are provided to an applicant who seeks registration of a domain name that matches a recorded mark and to the owner of the recorded mark.
Clearinghouse records may be used to support claims under a new dispute procedure called Uniform Rapid Suspension (URS), which may reduce the cost of enforcement.
The basic fees for the Clearinghouse are $150 for one year per record, plus legal or agent fees depending on the amount charged by your advisors.
We recommend that you complete your filings soon since the first new gTLDs may open for Sunrise registration in October 2013.
Domain Name Registration
The second step is to obtain desired active and defensive domain name registrations in the new gTLDs.
This is actually a long-standing best practice in the more familiar world of .com and .net. Securing the rights to a low cost domain, or even many of them, is quite a bit cheaper than legal action to enforce trademark rights after the fact.
The fees charged for domain names in the new gTLDs will be determined by the registry owner, so it is not yet possible to know the cost involved. Given that there will be many new gTLDs with the possibility of a vast number of potential domain name registrations relevant to a manufacturer’s brands and business, most companies will want to set priorities and a reasonable budget.
Begin by indentifying the desired TLDs for active and defensive registrations. An active registration is one you plan to use, perhaps for a website or email domain. Defensive registrations, on the other hand, are simply to prevent a competitor from using the domain.
The pending applications can be found at the ICANN site. Match these TLDs with Clearinghouse records to identify and obtain potential Sunrise registrations in the new gTLDs.
Also consider terms, such as generic names, geographic designations or future brands for registration during the land rush period when the new gTLDs open for general registration.
It is also wise to determine filing and management responsibilities for these new domain names to ensure consistent, proactive implementation.
The possibilities for these roles include in-house counsel, IT managers, marketing personnel and outside experts.
Finally, monitor the launch of the new gTLDs to avoid missing critical dates and opportunities.
Enforcement
The goal of enforcement is to prevent cybersquatting and infringing domain names when the new gTLDs operate. The benefits of an effective enforcement strategy are to reduce lost business, confusion and damage to company good will and to maintain a realistic budget.
The key strategies for implementation include:
Set parameters for action and work flow. Try to decide in advance what type of uses merit objections or other actions. Some uses may be more damaging than others.
Monitor IP claims and watch services. One of the benefits of the Clearinghouse is the ability to obtain IP claim notices if someone seeks a matching domain name in a new gTLD. Separate watch services will provide similar services. An effective enforcement plan requires attention to these notes at regular intervals to avoid delay and lost opportunities for early objection.
Send demand letters. Many disputes can be resolved by sending an email demand, particularly when the applicant is acting in good faith and the demand is supported by solid rights and based on a valid objection.
Negotiate purchase if appropriate. Not all domain name disputes merit aggressive litigation. Domain names supported by bona fide use may justify payment for transfer. Beware of establishing a reputation for paying to resolve disputes.
Take legal action when needed. The final step in an enforcement plan involves dispute resolution. Due to lessons learned over the nearly two decades we’ve had the current Internet, several low cost and effective procedures are available.
- All domain name registration contracts in the new gTLDs include use of the Uniform Dispute Resolution Procedure (UDRP). This a contractually mandated form of expedited arbitration based on written submissions with a decision normally issued within a few months.
- All new gTLD agreements include adherence to Uniform Rapid Suspension (URS), another expedited arbitration procedure that can be used to take down an infringing domain name in a few weeks.
- Cybersquatting violates federal trademark law and can be challenged in federal court. Potential recover includes statutory damages of up to $100,000 per domain name.
These changes to the Internet have been in the works for years, yet many of your competitors have likely done little planning to thrive in this new online environment.
There are 1,930 gTLD applications demanding your attention right now. Others in your industry are already taking action. By following the guidelines in this article, you’ll also be able to manage this change effectively.
Mark Partridge is the founder of Partridge IP Law, a Chicago-based law and IP strategy firm. He has worked in intellectual property law for more than 30 years and was named one of the top trademark lawyers in the 2012 edition of The International Who’s Who of Trademark Lawyers.
