Unless your clients have been living under a rock for the last 10-15 years, it is pretty safe to assume that most of your business clients are at least somewhat familiar with the importance of obtaining and protecting at least one good domain name for their website presence. And despite the fact that there are any number of alternative top-level domains such as .biz, .co, .net, .org, .tv, available, the vast majority of businesses still opt for trying to obtain the “.com” version of their domain name. In other words, “.com” domain names are still the gold standard.
Despite that, the non-profit NGO called The Internet Corporation for Assigned Names and Numbers (“ICANN”) that has been granted wide-ranging rule-making authority by Congress (and virtually every modern country in the world) is in the process of introducing a host of new generic top-level domains to the Internet. A generic top-level domain (or “gTLD”) is the three or more-character extension that is listed after the “dot” in a website name (e.g. the “.com” or the “.org”). Examples of the new gTLDs: .broker; .realtor; construction; .legal; .cars; .windows and so forth. Call them “not-coms”. ICANN is expected to add well over 1,000 of these gTLDs this year and in the next years to come.
Delegated gTLDs (those that are already part of the internet) can be found here: http://newgtlds.icann.org/en/program-status/delegated-strings
ICANN claims that this is good for business throughout the world. Whether that is true or not is yet to be seen. But it certainly has been good for ICANN: it received about 2,000 applications for new gTLDs at $185,000 per application. (The $185,000 is NOT a typo).
Expanding gTLDs gives rise to new opportunities for trademark infringement by making new second-level domains available (the part of a website address that is positioned just to the left of the “dot” that separates a gTLD, such as “branfman” in branfman.com), Thus, for example, if your client MOONRISE CONSTRUCTIONS is in the construction business and owns the domain name www.moonriseconstruction.com, what if a competitor tries to register www.moonriseconstruction.construction or www.moonriseconstruction.broker?
There are, however, a number of steps that can be taken to reduce some of the risks that are created by ICANN’s expansion of gTLDs. Here are some of them:
1. Register Your Trademarks at The United States Patent and Trademark Office (“PTO”):
Registering your trademarks at the PTO is one of the best protections that you can acquire for your trademarks and domain names. In addition to the Federal protection that a PTO registration provides to your trademark, you may also use a PTO Registration to acquire additional advantages such as registering the trademark with U.S. Customs to prevent importation of counterfeit products from foreign countries.
2. Record Your Trademarks in the Trademark Clearinghouse:
The Trademark Clearinghouse is an ICANN mandated repository of data on trademarks. The database provides authenticated information about trademarks to registries and registrars. Using your PTO Registration to record your mark with the Trademark Clearinghouse gives you at least four benefits. First, you will have the opportunity to file sunrise applications for second-level domains (for at least thirty days) before the gTLD is released to the general public. Second, for at least ninety days after the Sunrise period, anyone attempting to register a domain name matching a mark that is recorded in the Trademark Clearinghouse will receive a notification that the mark is recorded with the Trademark Clearinghouse. Third, if the party that received the notice of the recorded mark still decides to register the domain name, the Trademark Clearinghouse will notify the appropriate trademark holders of the new domain name registration. Fourth, it may help you to take advantage of some private party services, such as domain name blocking services.
Costs vary, but a brand owner may generally register their marks with the Trademark Clearinghouse for between $95-$150 dollars per mark, per year.
3. File Applications to Register Domains Before gTLDs are Released to the General Public (Sunrise Period):
ICANN requires that each new gTLD be given at least a thirty day “Sunrise Period” prior to launching the gTLD to the general public. The Sunrise Period is a priority-registration period that allows trademark holders an advanced opportunity to register domain names that correspond to their marks before domain names of the gTLD are launched. During this time a brand owner who has recorded their mark in the Trademark Clearinghouse has a chance to register second-level domain names that match the mark registered with the Trademark Clearinghouse before the gTLD is made available to the general public.
While recording a mark with the Trademark Clearinghouse is the minimum requirement to participate in the Sunrise Period of a gTLD, the Trademark Clearinghouse does not register actual domain names nor does it set the costs associated with registering domain names; rather you will need to use an appropriate domain name registrar, such as GoDaddy.com, and pay costs to the registrar.
The Trademark Clearinghouse offers a handy calendar that lists upcoming Sunrise Periods.
4. Consider Blocking Trademarks from Being Registered as a Domain Name:
A company named Donuts, Inc. has applied for over 300 gTLDs. Donuts, Inc. offers a service, Domains Protected Marks List (or “DPML”), that allows companies to block second-level domains from being registered on the gTLDs that Donut, Inc. operates. The price of the DPML service is tentatively expected to be around $2,900 to $3,000 dollars for a five-year registration.3 Initially, the cost seems high; however, Donuts, Inc. may ultimately acquire between 200 to 300 gTLDs in its portfolio. The cost works out to being able to defensively block all domain names within Donut’s portfolio for just $2 to $3 dollars per gTLD per year. This is expected to be considerably cheaper than defensively purchasing the same number of domain names during the Sunrise Periods. Additionally, DPML provides the flexibility of allowing a company to start using the domain names that they previously blocked if they choose.
5. Evaluate Defensive Registration Strategies:
Defensively registering in every new gTLD or blocking registrations may be cost prohibitive. If a company does not have unlimited funds, it should consider developing strategies to determine which domain names they will register.
Generally, the strategy of registering those domain names that are needed, those that might be needed, or those that will likely pose a high risk still remain viable touchstones. However, a large number of second-level domains will be created, and a company may be required to assess what thresholds appropriately reflect its budget and appetite for risk.
Specifically, some domain names registered by others will pose an obvious threat to your trademarks and should be prioritized. Other domains, however, may not pose such an apparent risk, at least initially. The cost of prioritizing these lower risk domain names may not outweigh the benefit; however, a company should periodically review the risks that such domain names create to their intellectual property portfolio and re-evaluate possible action. A brand protection service, such as Mark Monitor,4 BrandProtect,5 or Pinkerton6 may make this ongoing task more manageable. Services provided by these companies vary significantly and costs are commensurate with their involvement in your intellectual property portfolio.
Tip: Don’t forget that buying multiple .com versions of your core trademark(s) is still a good, solid foundational step for protecting your trademark assets. For example, if your client’s trademark is Moonrise Construction, your client will want to consider registering multiple versions of the trademark as domains names, such as:
- moonriseconstruction.com
- moon-riseconstruction.com
- moonrise-construction.com
- monoriseconstruction.com (This is an intentional type)
- moonriseconstructionsucks.com
The client usually will NOT actually set up going websites for each of the ancillary domain names. Instead the client’s webmaster will arrange to have all of the ancillary domain names passively “point” or re-direct to the client’s main website.
Since the possibilities are almost endless, the client needs to set an annual budget for domain name reservations and then determine how many domain names it can buy within the budget.
6. Hire a Domain Name Watch Service:
The Trademark Clearinghouse will only send notifications of exact matches of any marks that have been registered. The Trademark Clearinghouse will not send notifications of those marks that are similar if they are not exact matches. Similar marks may still infringe on your mark, so it is important to be aware of them. Hiring a domain watch service, such as Thomson Reuters, will help you identify marks that are registered within this gap. Expect prices to range from $375 to $570 dollars per mark per year.
7. Be Ready to Fight for Your Rights
Taking defensive measures by establishing your rights is important to mitigate risk to your trademarks. Unfortunately, there may still be times when you will be required to leverage the rights that you have established. There are a number of channels that can be used to vindicate your rights.
- The Uniform Domain Name Dispute Resolution Policy:
The Uniform Domain Name Dispute Resolution Policy (or “UDRP”) provides a forum for disputing an infringing domain name and it remains available to all new gTLDs. A successful UDRP resolution will result in the infringing domain being transferred or cancelled.
- The Uniform Rapid Suspension System:
The Uniform Rapid Suspension System (or “URS”) will be available only to the clearest cases of trademark abuse. While a temporary suspension of the infringing domain is the only remedy that URS will provide, URS should be less expensive than a UDRP proceeding, and it should expedite acquiring a remedy against an infringing domain.
- The Post-Delegation Dispute Resolution Procedures:
The Post-Delegation Dispute Resolution Procedures (or “PDDRP”) have been developed to provide a forum for those harmed by a gTLD registry operator’s conduct. A registry operator is the entity that maintains the database of domain names for a given gTLD. It is responsible for domain name allocation within the gTLD and functionally operates the gTLD. If a Registry operator violates ICANN’s code of conduct or its conduct otherwise harms your trademark, you should consider taking advantage of the PDDRP.
- File an Anti-Cybersquatting Action in Federal Court
Enacted in 1999, Section 43 of the Lanham Act protects a trademark owner from cyber squatters by establishing a civil cause of action in Federal Court for cyber squatters using a domain name that is confusingly similar to, or dilutive of an owner’s trademark.
CONCLUSIONS: From our perspective, the Internet is both a blessing and a curse. Yes, it has probably created billions of dollars of new wealth that wouldn’t have been possible without it. But it has also already created – and will continue to create – a host of new business and legal challenges that businesses and their lawyers need to grapple with. The launch of the new gTLD system is one of these. Because the gTLD system is relatively new, we do not quite yet know exactly how these challenges are going to play out. But one thing we can say for sure: helping a business officially understand and protect its trademarks is one solid step in the right direction.