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Safeguards for trademark owners in the launch of gTLDs

As most companies are aware, the Internet Corporation for Assigned Names and Numbers (ICANN) is planning to release more than 1,900 new generic top-level domains (gTLDs) over the next few years. Some of the new gTLDs are generic (e.g., .insurance, .hotel) and some are brand-specific (e.g., .apple, .chevrolet). The first new gTLDs are scheduled to launch on May 13, 2013.

However, trademark owners have legitimately expressed concern that upon the release of the new gTLDs, cybersquatters and competitors may attempt to register their valuable marks with the new gTLDs. To address these concerns, ICANN has established the Trademark Clearinghouse, a centralized repository of validated trademarks. Starting on March 26, 2013, trademark owners may register their marks with the Trademark Clearinghouse and participate in ICANN's sunrise and claims services.

Sunrise Period

During the Sunrise Period, trademark owners may register domain names that include their trademarks before the gTLD registration is open to the public. For example, if Apple registered its iPad® trademark with the Trademark Clearinghouse, it would have the opportunity to register www.ipad.apple and www.ipad.rocks before the general public would have the opportunity. Currently, the first Sunrise Period is scheduled to run for 30 days before the public has an opportunity to register second-level domain names with the newly released gTLDs. However, ICANN is considering an additional 30-day advance notice period to facilitate awareness and participation in the Trademark Clearinghouse.

Claims
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In addition to early registration opportunities, registrants in the Trademark Clearinghouse will also receive notifications if another person or entity applies for a second-level domain identical to the registered mark during the first 60 days the new gTLD is available. The claims service will not prevent the registration from going through, but this notification service will provide trademark owners with the information so they can decide whether to take action against the registrant to prevent or cancel the registration.

Additional Benefits

Registering a trademark with the Trademark Clearinghouse is also advantageous because a registrant may not need to submit evidence of use of its trademark when filing a complaint with ICANN's dispute resolution system.

No Replacement for Watch Services

While the Trademark Clearinghouse provides many important advantages to trademark owners, participation in the Trademark Clearinghouse will not replace traditional trademark watching services. Registries are only required to notify rights holders when an applied-for second level domain is identical to the trademark in the Trademark Clearinghouse. Rights holders will still need to monitor for potential confusingly similar registrations. In addition, the registry's obligation to notify rights holders also ends 60 days following the opening of the new gTLD. Given the limitations of the notification system, it is important to ensure traditional watch services remain in place.

Eligibility and Cost

To be eligible for registration with the Trademark Clearinghouse, a mark must be: (1) a registered mark; (2) a court-validated mark; or (3) protected by statute or treaty. Registration in the Trademark Clearinghouse will cost $150 per trademark per year, although there are some discounts for multi-year registrations and for brand owners with large trademark portfolios. This cost does not include the registration of any second-level domain names, however.

Trademark owners may apply by submitting the required information and fees. If you are interested in participating, we encourage you to contact us for more information.

For more information, please contact Melinda Giftos at (608) 234-6076 or mgiftos@whdlaw.com, Laura Grebe at (414) 978-5318 or lgrebe@whdlaw.com, or another member of the Intellectual Property Practice Group.

The opinions expressed herein or statements made in the above column are solely those of the author, and do not necessarily reflect the views of WTN Media LLC. WTN accepts no legal liability or responsibility for any claims made or opinions expressed herein.


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