In this second segment of our series, we discuss options for trademark owners on how to act defensively if they do not become registries under the new top level domain system.
The first blog in this series explained how the opening up of the Internet to new registries -- and the potential explosion of new top level domains -- could change the Internet. Yet many, if not most, trademark owners will not become a registry with their own top level domains, for financial, technical or other reasons. These trademark owners, however, should know how to protect their trademark rights from the new form of cyberpirates that is likely to emerge. This blog briefly describes the more important mechanisms that ICANN plans to offer savvy trademark owners to protect their rights.
Objecting to a Third Party’s New gTLD Application
Only four grounds may form the basis for a trademark owner’s objection to a new gTLD application:
- String Confusion Objection: The applicant’s proposed gTLD “string” of letters, is confusingly similar to a pre-existing gTLD or another applied-for gTLD string in the same round of applications.
- Legal Rights Objection: The applicant’s gTLD string infringes the legal rights of the objector, such as the objector’s trademark rights. Factors in deciding a legal rights objection are similar to those in the Uniform Domain-Name Dispute Resolution Policy under current practice.
- Limited Public Interest Objection: The applicant’s gTLD contravenes generally accepted standards of morality and public order under international law.
- Community Objection: A significant part of the community, such as a geographic community, objects to the gTLD application, e.g., New York City residents might object to a Miami company’s submission for a .nyc registry.
To initiate a proceeding, the objector must file its complaint by a posted deadline with an appropriate Dispute Resolution Service Provider (DRSP), along with a specified fee. For many companies, the most relevant DRSPs are the World Intellectual Property Organization (for legal rights objections) and the International Centre for Dispute Resolution (for string confusion objections).
Protecting Against Infringing Second Level Domains in the New Domain Name Space
ICANN’s program contemplates important measures to protect trademark owners from the registration of second level domains, combined with the new gTLDs, by trademark infringers. Thus, a company owning the ABC® mark could invoke the procedures described below to prevent a third party from registering “ABC.new TLD” or to learn of such registrations.
The Trademark Clearinghous. ICANN plans to create a Trademark Clearinghouse, i.e., a central database for information about trademark rights. Trademark owners who want to register their second level domains with the new registry ahead of the general public, and trademark owners who want to be notified if a would-be infringer registers their trademarks as second level domains, must submit evidence of their trademark rights to the Trademark Clearinghouse. This evidence may consist of: a trademark registration; a judicial decision recognizing the trademark; or other evidence showing that the mark “constitute[s] intellectual property”. This Clearinghouse will authenticate information about the trademarks it receives and store that information in its database. It will provide information about the authenticity of the trademarks in its database, as needed, to new gTLD registries for use in the Sunrise Service and Trademark Claims Services described below.
Sunrise Service. New gTLD registries must provide a Sunrise Service that protects trademark owners from a “race to registration” against domain name registrants who might infringe the trademark owners’ rights. The anticipated sunrise period will be at least 30 days before the launch of a new gTLD, during which time a rightful trademark owner may reserve its mark as a second level domain with the new gTLD, ahead of others who might try to reserve the same name. For example, if a major car manufacturer could register its MERCEDES® mark as “mercedes.car” before Company S permits the public to register domain names in the .car gTLD.
Trademark Claims Service. In addition, all new gTLD registries must provide a Trademark Claims Service for the first 60 days after the public launch of their new gTLDs, i.e., after the general public can begin registering domain names in the gTLDs. This service provides a warning notice, called the Trademarks Claim Notice, to prospective registrants of a pre-existing trademark owner’s rights when the domain name applicant attempts to register a domain name that is an “identical match” to the trademark that the trademark owner has listed with the Trademark Clearinghouse. This notice, however, is of limited utility, because it is only triggered when a third party tries to register a second level domain identical to a trademark that resides in the Trademark Clearinghouse. If the domain name registrant proceeds with the registration application, the trademark owner will receive a notice informing it that a domain name that is an identical match to the trademark owner’s mark has been registered.
Objections to Registrations. The Uniform Dispute Resolution Procedure that currently applies to disputes involving registration of second level domains with .com, .net, .org and certain other top level domains will apply to registration of second level domains with the new gTLDs. An entity that wants to challenge registration of a second level domain with a new gTLD may, assuming jurisdiction and venue lie, also file a lawsuit in the United States alleging infringement, cybersquatting and related causes of action.