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Dot What? Approximately 1,000 More Generic Top-Level Domain Names Will Soon Be Available

Jul 24, 2013

The Internet Corporation of Assigned Names and Numbers (ICANN), which is responsible for administering the new generic top-level domain (gTLD) program, is now accepting submissions to its newly-established Trademark Clearinghouse.

There are currently 22 generic top-level domains, including .com, .net, and .org., which are available for registration by the general public, over 280 country code domains (e.g., .us, .uk, .cn, .hk), which may limit registration to users based on geographic or other considerations, and a handful of domains reserved exclusively for technical infrastructure (e.g., .arpa), members of a sponsoring entity (e.g., .mil for the United States military) and other purposes.  The new gTLD program is expected to add more than 1,000 new generic top-level domains over the course of the next few years.

The challenge for trademark holders has largely been at the second level (e.g., "clarkhill" is the second level domain of "clarkhill.com"), where mark holders must be particularly vigilant that someone else does not register a second level domain that is the same or similar to the mark holder's trademark.  Businesses have spent countless dollars monitoring the existing spaces and fighting cybersquatting cases to enforce their rights.  The risks and stakes will now go up exponentially with the delegation of many new top level domains.  Now, mark holders will have to protect their trademark interest, in the future, over potentially thousands of new channels.

Recognizing the costs and burdens involved, and that trademark owners should have the opportunity to protect their marks by registering domain names containing the marks, ICANN has established a Trademark Clearinghouse (TMCH).  The TMCH will serve as a database of trademark information accessible to each of the registries responsible for registering new domains using the new gTLDs.  Registering trademarks with the TMCH allows trademark owners to participate in both the Sunrise Period and Trademark Claims period for each new gTLD authorized by ICANN.

The Sunrise Period is a limited-time pre-registration window in which trademark owners may register domain names that exactly match their trademarks registered with the TMCH before the domains go on sale to the general public.  Individual registries' standard registration fees will apply for domains registered during the Sunrise Period.  Additionally, during the Sunrise Period and for a sixty day Claims Period thereafter, the TMCH is designed to put trademark owners on notice when a third party registers a domain that uses the owner's mark.  If a prospective domain name registrant attempts to register a domain that exactly matches the trademark owner's registration, the prospective domain name registrant will receive a notice that the domain matches a trademark registered with the TMCH.  If the domain name registrant goes through with registering the matching domain, the trademark owner will receive notification that the registration has occurred.

The fee for registering marks with the TMCH is approximately $150 per year per mark.  Trademark owners may opt to register their marks with the TMCH for one, three, or five year terms, with reregistration allowed at the expiration of the chosen term.

Weaknesses in the TMCH system include eligibility requirements and the scope of protection available.  Only nationally registered trademarks, marks that have been judicially validated, and marks protected by statute or treaty are eligible for registration with the TMCH.  Trademarks registered in individual states in the U.S. and those that are unregistered may generally not be registered with the TMCH.  Additionally, the system only reacts to exact matches (with a few punctuation/spelling type exceptions), so trademark holders will not receive notifications related to potentially confusingly similar, but not identical, domain name registrations.

Registering trademarks with the TMCH may simplify a trademark owner's process of monitoring and responding to new domain name registrations by giving the trademark owner both a first chance to register domains matching their TMCH-registered trademarks and automatic notice of registrations obtained by third parties which match their TMCH-registered trademarks.  Trademark owners wishing to take advantage of the TMCH registration process are advised to do so as soon as possible, as the trademark registration verification process can take some time.    Delegation of new top level domains, and corresponding sunrise periods, are expected to begin as early as September 5, 2013 .

On the flipside,  trademark holders may see a strong business opportunity in registering a corresponding second level domain in one of the new top level domains.  A list of applications is contained at https://gtldresult.icann.org/application-result/applicationstatus, and you may want to review the list to see if there is a domain space in which you would like to stake a claim.

For more information regarding ICANN's Trademark Clearinghouse and the new gTLD domains, please contact Dave Marr, John Hines or Jen Woods.