About 9 months ago, ICAAN announced the the list of applicants who applied to launch new .ANYTHING top-level domains (gTLDs). If .STORE or .EMAIL or .SHOES become available to domain registrants, how can brand owners protect their trademarks from the registration and use of (hypothetically, for the ACME shoe brand) ACME.STORE or ACME.SHOES?
There will be several mechanisms available once the new domains are active, but the recently launched Trademark Clearinghouse may be the most effective and affordable for owners of trademark registrations with concerns about these new domain names.
First, a little background: A top-level domain (or “TLD”) is the last word (or abbreviation) in a web address. “.com,” for instance, is probably the most familiar top-level domain among others like .gov, .org, .net, and .uk. Top level domains are preceded by the second-level domain. For example, in the web address “www.amazon.com,” “amazon” is the second-level domain, and “.com” is the top-level domain.
Last year, the Internet Corporation for Assigned Names and Numbers (“ICANN”) began accepting and processing applications for hundreds or even thousands of potential new top-level domains. Applicants must demonstrate the ability to administer the sale and assignment of second-level domains within their proposed new top-level domain. For example, if Google can convince ICANN that it has the ability to be the IT company that acts as the registrar that administers all the possible combinations of “www.whatever.google,” then ICANN may grant to Google the top-level domain “.google.” However, demonstrating the ability to maintain a new top-level domain to ICANN is not easy for common folk because applicants must prove that they have the ability to be a domain name registrar and the application fee alone costs $185,000.
This affects brand owners in several ways. If you own a brand, you obviously don’t want someone else owning the web address www.yourbrand.com. This problem is partially assuaged by the facts that each new top-level domain application is expensive, is posted online, processed slowly over the course of months if not years, and is even subject to public comment. But there is a second problem which is likely much greater: the possibility that a third-party registers your brand at the second level under one or more of the new top-level domains, e.g. “yourbrand.newTLD.” For instance, perhaps Comcast® should be worried that once the .email domain name is live, someone would attempt to register comcast.email, which could be used for spam or other purposes. And comcast.email, comcast.television, and others could also be used to cause confusion, or could block Comcast® from using the second level domains itself. Note that if someone does register and use a second level domain in an infringing or cyber squatting manner, there are possible causes of action against them – but they are expensive and cumbersome.
As a result, ICANN has come up with a way to quell some of the fears of brand owners, called the Trademark Clearinghouse. The Trademark Clearinghouse is a regime under which trademark owners can prevent, for example, “theirbrand.whatever” from being purchased, parked, or used. For a fee of about $150/year, beginning March 26, 2013, owners of valid trademarks will be able to submit their mark to the Clearinghouse in order to take advantage of two basic protective services: “Sunrise” services, and “Trademark Claims” services. The “Sunrise” services entitle Clearinghouse participants the opportunity to register “theirTM.newTLD” for at least 30 days before the general public has the opportunity to register “anything.newTLD.” If a Trademark Clearinghouse participant chooses not to secure “theirTM.newTLD” within the 30 day grace period, the Trademark Claims services will alert a potential registrant when they attempt to register “someoneelse’sTM.newTLD.” If the potential registrant chooses to proceed to registration after being notified of the conflict, the Trademark Claims services will notify the trademark holder of the domain name registration so they can take any appropriate action if they see fit.
It’s a little bit complex, so here is an example. Assume you own the valid U.S. trademark “AWESOME SAUCE,” and assume you registered into the Trademark Clearinghouse. Now, assume somebody else is granted the new top-level domain “.tshirts.” Under the “Sunrise” services, you have 30 days to register “AWESOMESAUCE.tshirts” before anybody else can. And if you choose not to take advantage of the 30 day “Sunrise” period, when anybody else tries to register “AWESOMESAUCE.tshirts,” they will receive a notification of the possible conflict with your “AWESOME SAUCE” trademark. If they choose to ignore the notification and proceed to register the domain, you will be notified that somebody else has registered a domain that conflicts with your trademark.
Trademark owners considering the Clearinghouse should note the limited protection it offers. First, it is likely that the protections of the Clearinghouse only cover an exact match to a participating trademark, so that in our example ‘awesomesauce’ is protected but ‘awesomesauces’ is not. Second, the Clearinghouse will only recognize registered trademarks, marks protected by statute or treaty, and court validated marks. Note also that the clearinghouse fee is about $150 per year per mark.
In summary, the Trademark Clearinghouse provides trademark owners the opportunity to register their trademark as the second-level domain in any new top-level domain before anybody else gets the same opportunity (note that those registrations may be much more expensive than dot-coms since the price will be controlled by the party that paid the large application fee to ICAAN). Also, in the event that a trademark owner chooses not to take advantage of that opportunity, the Clearinghouse will notify that trademark owner if and when their trademark is being used as a second-level domain in any one of many possible new top-level domains.
Should brand-owners invest in the Trademark Clearinghouse? Possibly. One thing is for certain: $150 per year may add up over time, but it could prevent one or more even more costly and unpredictable lawsuits in the future. If your brand is strong and already been a part of infringements or disputes with social media user names or other domain names, the Trademark Clearinghouse is likely a valuable piece of insurance to help control the brand and reduce trademark enforcement and legal fees.
[Note: Thank you to law clerk Nicholas Santucci for contributions to this article]