Tag: gtld

New generic Top Level Domain (gTLD) – ICANN Trademark Clearinghouse Goes Live

Lewis and Roca LLP eading business law firm in the Southwest U.S.

Trademark Clearinghouse Launch

Complaints regarding inadequate protection for trademark owners will apparently not stop the Internet Corporation for Assigned Names and Numbers (“ICANN“) from launching its new unlimited gTLD (generic Top Level Domain) program as quickly as possible in 2013. The new web environment will include hundreds of different words appearing to the right of the dot in domain names, in sharp contrast to the existing limited number of authorized strings such as .com, .biz, .net, and .info. Initial evaluations of over 1900 applications for new Top Level Domains have begun to be published by ICANN and will continue through August. Strings containing non-Latin script, known as Internationalized Domain Names (“IDNs”), of which there are over 100 in Chinese, Arabic and other alphabets, will launch first in May or June.

Trademark owners concerned about cybersquatting and counterfeit goods or services that could be sold at websites created at second level (before the dot) urls via domain name registrations obtained in the new gTLDs should consider filing registered trademarks with ICANN’s Trademark Clearinghouse (TMCH) which goes live this week. For example, a manufacturer of food products may consider recording its registered brand names with the TMCH to help protect against use of the brand name by an infringer who might purchase the name to the left of the dot in the new (dot)food domain. As long as the registration was applied for before the particular TLD application was published and was also registered before that TLD contract is awarded, entry of a trademark registration record into the TMCH will provide two benefits: (1) eligibility for Sunrise registrations before the general launch of any particular new TLD if a specimen of use is filed at the time the registration record is entered into the TMCH and (2) notification to the owner if a third party proceeds to register the owner’s trademark at the second level after being notified by the TMCH of the owner’s claim. Common law marks and state registrations are not eligible for entry into the TMCH, but marks validated through judicial process or by statute will qualify

There are caveats associated with these benefits because eligibility for Sunrise does not guarantee the trademark owner will get the Sunrise registration if other parties also own the same registered mark (perhaps for different goods or services). It’s easy to see how this might become a problem in proposed TLDs such as (dot)store. For example, Apple Records may want to sell downloadable music at apple.store, but Apple Inc. may also want to sell consumer electronics at apple.store. Registries will have a method in place for resolving Sunrise registration disputes and this may not be first come, first served. It could ultimately involve a bidding or auction process. Further, the notification described above will only be in place for the first 90 days after general launch of a new TLD so the holder may need to employ a watch service to track registrations purchased by third parties after that 90 day period.

Unlike the recent launch of the XXX domain, there is no “blocking” mechanism available to trademark holders in connection with the new TLDs. This puts a premium on obtaining a preventive Sunrise registration or being willing to follow up with cybersquatters on an “after-the-fact” basis once they have already obtained a registration.

In a decision issued at the end of last week, ICANN confirmed requested improvements for (a) 30 days prior notice of the launch of Sunrise, (b) extending IP claims notification from 60 days to 90 days out from general launch and (c) allowing previously “abused names” (such as those established as “abused” by way of prior UDRP proceedings) to be entered into the TMCH alongside the registered trademark even if not identical to the registered trademark. Presumably these previously abused names would then give rise to IP Claims notifications, but the implications are unclear since the TMCH has yet to issue its final Submission Guidelines based on these latest changes to the system. Entry of TMCH records will involve legal decisions, including, but not limited to (1) whether to enter a registration into the TMCH or not, (2) whether to seek Sunrise registration or not, (3) how best to provide proof of use if a Sunrise registration is desired in any new TLD, (4) which period of protection to select (1, 3, or 5 years), and (5) which domain names and previously “abused names” will qualify for TMCH protection.

©2013 All Rights Reserved. Lewis and Roca LLP

The DotCom Shake-Up: How Will You Protect Your Rights in the New Imminent Domain Name Release?

Barnes & Thornburg LLP‘s Internet and Technology Group recently had an article, The DotCom Shake-Up: How Will You Protect Your Rights in the New Imminent Domain Name Release?, featured in The National Law Review:

The Internet Corporation for Assigned Names and Numbers, often referred to as ICANN, has now released its list of 1,930 applications for proposed new generic Top-Level Domain Names (“New gTLDs”). A list of the New gTLDs and the respective applicants is available here.Much speculation has been made about how these New gTLDs, if successful, will impact the Internet. Brand owners and others are advised to be diligent in preventing others from securing any New gTLDs that may adversely affect their rights.

As expected, many of the applications seek registration of New gTLDs that correspond with generic terms such as .business, .city, .computer and .beer. Still, numerous other applications include domains that correspond with brand names, such as .google, .hbo, and .ferrari.  In many cases, more than one applicant has sought registration of the same New gTLD. Additionally, some of the New gTLDs requested, undoubtedly correspond with trademarks belonging to others.

To address potential disputes over New gTLD applications, ICANN offers several types of pre-delegation dispute resolution procedures to address objections to registration, including:

  1. Legal Rights Objections;
  2. Community Objections;
  3. String Confusion Objections (objections based on confusing similarity to existing top level domains such as .com or .info); and
  4. Limited Public Interest Objections (for example, objections based on human or civil rights); and
  5. Intergovernmental Organization objections

Prior to ICANN’s approval of a New gTLD, third parties will have an opportunity to file a formal objection to a proposed application on the above-stated grounds. Currently, the objection filing window is anticipated to be seven months, from June 13, 2012 to Jan. 13, 2013.

Most objections will likely consist of Legal Rights Objections and Community Objections.

Legal Rights Objections

Brand owners are strongly encouraged to review the list of New gTLD applications to help identify potential legal rights violations.  If a potential violation is identified, brand owners can initiate an arbitration proceeding requesting that an independent panel determine whether an applicant’s potential use of the applied-for New gTLD would be likely to infringe the brand owner’s trademark rights.  To address any such concerns, brand owners may seek to prevent the registration of applied for gTLDs that:

(i)  take unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark;

(ii)  unjustifiably impair the distinctive character or the reputation of the objector’s mark; or

(iii) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark.

Community Objections

Established institutions that are associated with clearly delineated community may also have a basis to object to New gTLD applications.  To prevail, an objector must demonstrate there is a substantial opposition to registration of that New gTLD by the community and that the use of the New gTLD will cause a material detriment to the rights or legitimate interests of its associated community and the broader Internet community.

© 2012 BARNES & THORNBURG LLP

Has Someone Applied to Register Your .BRAND? Top Five Things You Need to Know

The National Law Review recently published an article by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding The Registration of Brands:

You’ve heard about the planned expansion of the domain name system, but what does it really mean for trademark owners?

Last year, the Internet Committee for Assigned Names and Numbers (ICANN), the organization responsible for the coordination of the global Internet domain name system, announced a plan to bring sweeping changes to the Internet’s generic top level domain (gTLD) structure. Internet users are familiar with gTLDs, if not by name. gTLDs are Internet extensions such as .com, .org and .net found at the end of a domain name. Under the new system, a business could apply to own its .BRAND. An automobile company could apply to own .CARS. A city government could apply to own .CITY. The possibilities, seemingly, are endless.

ICANN received 1900 applications for new gTLDs during the first application period, which is now closed. Google announced last week that it had applied for the gTLDs .GOOGLE, .YOUTUBE and .LOL among others. Canon Inc. announced that it has applied for the gTLD .CANON in order to “increase the convenience and effectiveness of its online communications.” The domain name registry Donuts Inc. announced that it has applied for 307 new gTLDs. The timeframe and process for reviewing the applications are somewhat fluid but the first new batch of gTLDs is slated to become active in early 2013. The remaining batch of applied-for gTLDs will not go live until 2014 or later. So what should trademark owners do now to prepare for the new regime?

1. Review and Analyze the List of Applied-For gTLDs

In what ICANN calls “Reveal Day,” on Wednesday, June 13, 2012, ICANN will publicly post a listing of all applied-for gTLD character strings. This will be the first public glimpse into which entities have applied to own which new gTLDs. Although some companies have announced publicly that they have submitted applications to participate in the new gTLD program, most have remained silent throughout the initial application phase. But all will be revealed on Reveal Day. Trademark owners should carefully review the list of applied-for gTLDs in order to determine if any conflict with pre-existing trademark rights. But remember, the list of applied-for gTLDs have not been approved by ICANN yet. There is time to take action if necessary to protect your trademark rights.

2. Submit a Comment to ICANN

What can you do if you learn on Reveal Day that someone has applied to register your .BRAND? Following publication on Reveal Day, interested parties may submit comments related to proposed new gTLDs to ICANN for consideration by the independent evaluators assessing each application. During the comment period, trademark owners can submit comments regarding potential trademark infringement, dilution, and related concerns raised by particular applications for gTLDs. Application comments received within 60 days of Reveal Day, i.e., by August 12th, will be available to the evaluation panel performing the initial evaluation reviews of all pending applications. Initial evaluation of the applications is expected to begin in early July.

3. Use Dispute Resolution Procedures to Object to Infringing gTLDs and/or Domain Names

Separate from the comment procedure, and prior to the approval of an applied-for gTLD, a formal objection process will be available to trademark owners. ICANN has appointed the World Intellectual Property Organization (WIPO) to be the exclusive provider of dispute resolution services when a third party files a formal “Legal Rights Objection” (LRO) to a pending application. A Legal Rights Objection can be filed where the applied-for gTLD (i) takes unfair advantage of the unique character or the reputation of the objector’s registered or unregistered trademark, intergovernmental organization (IGO) name or acronym, or (ii) without justification, the gTLD impairs the distinctive character or the reputation of the objector’s mark, IGO name or acronym, or (iii) creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark, IGO name or acronym. The LRO process offers a good option for trademark owners who believe that their trademark rights may be encroached upon by a particular applied-for gTLD. But the process comes with a price tag of $10,000 fee for arbitration of a LRO by a single-member panel. The applicant of the challenged gTLD similarly is required to pay a $10,000 fee. If the applicant fails to do so, the objection will be deemed successful. The sole remedies available for a LRO are the success or dismissal of the objection. Monetary damages are not available through this process.

Many anticipate that the problem of “cybersquatting” will dramatically increase with the expansion of the gTLD system. Cybersquatting refers to the bad faith registration of a domain name that contains another’s brand or trademark. If an applied-for gTLD is approved by ICANN and domain names registered using the new gTLD infringe upon your trademark rights, the Uniform Domain Name Dispute Resolution Policy (UDRP) remains available to resolve domain name disputes. Under the UDRP, domain name disputes are typically resolved in approximately 45-60 days and the associated filing fees are relatively low (approximately $1500 to resolve a dispute involving up to 5 domain names). WIPO has stated that the UDRP is “the only proven mechanism in place to absorb the impact of gTLD expansion.”

Another alternative currently contemplated by ICANN is the Uniform Rapid Suspension System (URS). The URS is intended to be a faster, more cost-efficient complement to the UDRP. It is intended for cases of trademark abuse. Unlike the UDRP, which allows a trademark owner to obtain the transfer of a domain name that impairs its trademark rights, the sole remedy available under the URS is the temporary suspension of a domain name for the duration of the registration period (which may be extended for one year). While the URS substantive criteria mirror that of the UDRP, there is a higher burden of proof for complainants. ICANN has not yet selected a vendor for the URS System.

4. Register Your Trademark With ICANN’s Trademark Clearinghouse

In connection with the launch of new gTLDs, ICANN plans to form a Trademark Clearinghouse. The Trademark Clearinghouse is intended to serve as a single database of authenticated, registered trademarks and will eliminate the need for trademark holders to register their marks in many different databases as new gTLDs are introduced. ICANN will require every new gTLD operator to utilize the Clearinghouse, which will be available globally and have the capabilities for validating trademark data from multiple global regions. As a result of these functions, the Trademark Clearinghouse is expected to play an important role in ensuring ongoing protection of trademark rights under the new scheme. If you are a trademark owner and have not applied to register a gTLD, registering your trademark with the Trademark Clearinghouse is an important step in protecting your trademark rights in the new gTLD world. The fee for initial trademark authentication and validation services is expected to be less than $150 US per submission/trademark.

Trademark owners who lodge their marks with the Clearinghouse will obtain certain advantages and notifications during “sunrise” periods that will apply to registrations of second-level (to the left of the “dot,” such as “secondlevel” in secondlevel.BRAND) domain names within newly launched gTLDs. In addition, registrants of second-level domain names will receive (at least for some period of time) notifications of trademarks that are an identical match to their newly registered domain names. Second-level domain name registrants, though, are not prevented from registering the sought-after domain name based on registration of a trademark with the Clearinghouse. They are simply put on notice that the domain name may conflict with another’s trademark rights. Importantly, notice to domain name registrants will not be provided except where the match with a trademark is identical. So, if the second-level domain name contains a misspelling of a trademark, no notification will be given to the registrant.

5. Apply to Register Your Trademarks and Service Marks

Having federally-registered trademark rights will offer valuable protection as the new domain name system becomes a reality. To the extent that you are using or plan to use a trademark or service mark in connection with the offering of goods or services and have not yet applied for federal trademark protection, you should consider doing so now. A federal trademark registration provides many valuable benefits. To start, it provides the owner with rights on a national (as opposed to a regional) level. A federal registration also provides you with the exclusive right to use the mark on or in connection with the goods or services listed in your registration. In connection with the new gTLD system, a federal trademark registration will help to strengthen and reinforce your trademark rights. It will also establish ownership of a particular trademark and, therefore, standing, to submit a legal right objection or other challenge to an applied-for gTLD or second-level domain name.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

Domain Names Go Creative: Will We Soon See Dot-Poker?

Griffin Finan of Ifrah Law recently had an article about Domain Names published in The National Law Review:

Domain names on the Internet are about to get much more varied and creative. Soon websites will not just end in the few familiar suffixes like “com” or “edu,” but could end in things like “.movie” or ”.lawyer” or “.lol.”

On Wednesday, the Internet Corporation for Assigned Names and Numbers (ICANN), the organization tasked with regulating Internet domain names, released a list detailing who has applied for new suffixes, also known as top-level domains (TLD). This is the third major expansion ICANN has allowed of domain name suffixes, in addition to a few others that have been allowed on an ad hoc basis. The new system will streamline the application process and allow for up to 1,000 new domain suffixes a year.

The application process allowed companies to apply for their own brand name to use as their domain suffix name. For instance, Apple applied for the “.apple” suffix. Amazon applies for 76 names including “.amazon” and “.zappos.” Google applied for over 100 suffixes, including “.google” and “.youtube,” as well as “.lol,” and “.book.”

An interesting development related to the world of online gaming is that four groups applied for domain names that would end in “.poker.” The companies that applied for the “.poker” suffix are U.S.-based Binky Mill, LLC and Dot Poker, LLC as well as European-based dot Poker Limited and Afilias Domains No. 5. Limited.

Now that the initial list of applicants for TLD’s has been released, the public will have 60 days to comment. This time period will allow for companies and organizations to see whether others’ applications conflict with their interests or their intellectual property. After conflicts are resolved, there will be an appeals process. The new addresses likely will not launch until next year.

It remains to be seen whether these new domain extensions will become popular. Some companies may be able to capitalize on the marketing opportunities presented by the new TLD’s and other generic TLD’s that could become much more common. In any event, domain names are surely going to be more creative starting very soon.

© 2012 Ifrah PLLC

Nothing Revealed on “Reveal Day”: New gTLD Application System Remains Suspended

Recently an article by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. regarding The NEw gTLDs was published in The National Law Review:

The much anticipated “Reveal Day” — so dubbed by ICANN itself — has now come and gone without fanfare.  May 1st was to be the day when ICANN was scheduled to publish the list of all applied-for new generic top level domains (gTLDs) as part of the roll-out of the new Internet era.  Instead, all that was revealed today was that ICANN remains mired in technical glitches.

ICANN announced last Friday that, though it had hoped to re-open the online application system on April 27th, the system would remain shut down.  ICANN now plans to notify all applicants within the next seven business days (by May 8th) as to whether their applications were affected by the “technical glitch” in the TLD application system.  The “technical glitch” at issue is that ICANN’s application system allowed a limited number of users to view some other users’ file names and user names.  For the past two and a half weeks, ICANN has been (and continues to be) reviewing its internal system logs and full packet-level capture of all traffic to and from the application system from when it opened the application system on January 12th until it was shut down on April 12th.  After it notifies all applicants, ICANN will announce a new schedule for reopening the system and allowing applicants to confirm the completeness of their applications.  At the time the application system was shut down, the number of registrants in the system was 1,268. According to ICANN, this number could change (for example, for applicants that might withdraw or were in the process of submitting their $5000 deposit when the system was taken offline). Many business (and their trademark counsel) are anxious to review the list of which .BRANDS and .GENERICS have been applied-for.

But, alas, it seems that nothing will be revealed anytime soon.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.