Legal Alerts

Significant New Expansion of Internet Domains Requires Trademark Owners to Take Immediate Action to Protect Their Rights

06.01.12

On June 13, 2012, the Internet Corporation for Assigned Names and Numbers (ICANN), which oversees Internet operations and policy, revealed the identity of the over 1900 new top-level domain applications that have been filed under its new Internet expansion policy. Last year, ICANN changed its policy to allow anyone to apply for essentially any word or phrase, including existing trademarks, as new generic top-level domains (gTLDs), such as the already-existing .com, .org, and .edu. A huge number of applications were filed worldwide, and when approved they will soon make the Internet a significantly more complex place for trademark owners.  These are just a few of the new gTLDs that you may soon see on the Internet: .bank, .autoinsurance, .bestbuy, .apple, .healthcare, .google, .NBA, .movie, .realestate, .app, .delta, .hotel, .wine, .green, .youtube, .nyc, and .kids. A complete list of these potential new gTLDs recently revealed during this first round of applications is now available at ICANN’s new gTLD website. Each new gTLD will, in turn, open themselves up for registrations of potentially thousands of new second-level domain names under each new gTLD. ICANN plans to begin approving applications for new gTLDs in the first quarter of 2013. Additional rounds of new gTLD applications will be likely announced in the future.

Trademark Owners Need to be Diligent to Protect Their Rights

Trademark owners must be aware of what new gTLD applications have been filed in order to protect, enforce, and better market their names and brands. New gTLDs could cause increased consumer confusion, online fraud, cybersquatting, and typosquatting and could significantly affect trademark owners' enforcement efforts. In order to address this situation proactively, ICANN has designated a seven month formal objection period, ending January 13, 2013, for trademark owners to object to any pending new gTLD applications. New gTLD’s may also present important branding opportunities for companies who may wish to shift their existing domains to a new gTLD once it is approved or may wish to know how their major competitors or affiliated companies might do so. In some cases, new gTLDs may create new categories of Internet domains that become central to an industry’s brand presence on the Internet. 

Four Steps to Consider to Protect Trademark Rights Under the New GTLD Policy

1. Review the Complete List of New gTLD Applications. Review the complete list of new gTLD applications released on June 13, 2012, at ICANN’s new gTLD website and consider the following:

  • Whether any of the new gTLDs could conflict with your existing trademark rights.
  • Whether any of the new gTLDs may be relevant to your company’s existing brands, business operations, or industry.
  • Whether any of the new gTLDs could be a significant source of cybersquatting or typosquatting (i.e., attempts by non-trademark owners to register and use domains incorporating others’ marks for pecuniary gain, generally by selling the domains later or using them for ad sites that redirect Internet traffic for pay-per-click advertising revenue).
  • Whether any of the new gTLDs may have been applied for by your affiliated companies or your competitors or be useful to them. 

2. Object to Any Infringing gTLD Applications. Between June 13, 2012 and January 13, 2013, ICANN has provided for a formal objection period for trademark owners during which objections may be filed with a dispute resolution service provider. Objections may be made on several grounds, but most commonly may be made based upon the objector’s existing trademark rights in cases where the new gTLD would arguably create an “impermissible likelihood of confusion” with the protected mark. The objection process is likely to be similar to an arbitration proceeding under the Uniform Domain-Dispute Resolution Policy (UDRP).   

3. Prepare for Participation in Approved gTLD Sunrise Registration Periods. Depending upon your company’s defensive domain registration policy, consider and prepare for participating in the sunrise registration periods of any gTLDs that 1) may be relevant to your company’s existing brands, your business, or your industry, 2) could be a significant source of cybersquatting, or 3) may have been applied for by your affiliated companies or your competitors or be useful to them. A sunrise period occurs before a new gTLD is opened up to general domain registrations and should allow trademark owners to both block their relevant trademarks from being registered under the new gTLD and seek strategic domain registrations in certain gTLDs that could protect or strengthen your brands. 

4. Take Advantage of the ICANN Trademark Clearinghouse. In order to better facilitate the above, companies should also identify and register their primary trademarks with the Trademark Clearinghouse that ICANN plans to set up in order for trademark owners to receive alerts of identical new gTLD applications and to participate in the sunrise registration processes of approved gTLDs. The details of the Trademark Clearinghouse will be announced by ICANN soon. 

Conclusion

In order prepare for this new gTLD program, Lindquist’s Intellectual Property Group strongly encourages companies to review their existing domain name and trademark portfolios as well as their domain registration and trademark enforcement policies. For assistance with this review process, or to learn more details about the viability, procedures, and costs of a new gTLD objection, or to participate in the ICAAN trademark clearinghouse, please contact the Lindquist & Vennum Intellectual Property Group.

The information provided above about a new development of the law is intended for general informational purposes only. It should not be construed as legal advice or legal opinion on any specific facts or circumstances; and you are urged to consult a Lindquist & Vennum LLP attorney or one of your own choosing concerning your situation and specific legal questions you have.

Contact
LaFromboise, Antoine J.
Communications and Brand Manager
T 612.371.3269

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