Generic Top Level Domains Create New Opportunities and New Headaches for Colleges and Universities

by Bond Schoeneck & King PLLC
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domainsFor decades, the Internet was limited to a small number of top-level Internet domains, the most common being .com, .org, .net, .edu, and country-specific domains. However, in 2012 the Internet Corporation for Assigned Names and Numbers (ICANN) began offering new generic top-level Internet domains (gTLDs) to any entity willing to pay the nearly $200,000 in required fees. There are now hundreds of gTLDs, with the most popular new domain being .guru with more than 50,000 domains registered.

Starting this week, the owners of the new top-level domain “.college” offered colleges and universities with registered trademarks the opportunity to register their trademark as a domain for free until April 17, 2015. On April 20th, a general “landrush” period will open in which universities will be able to register domains that aren’t registered trademarks.

For .college and any other new gTLD, the question is whether it is worthwhile to register the college or university’s trademarks as domains. Institutions that are unhappy with or limited by their current .edu or .com domains should consider whether a .college domain would enhance their online brand. Additionally, since the .college domain may be especially susceptible to uses that infringe the trademarks of colleges and universities, institutions should consider registering for this particular gTLD.

Although .college is wisely allowing higher education intuitions the ability to reserve their registered trademarks as domains for free, many gTLDs charge for this opportunity, thereby recovering the considerable expense incurred when creating the domain. The cost of registering a trademark at every new gTLD can quickly become exorbitant. As an alternative to registering their name with every new gTLD, colleges and universities should be aware that there are both proactive and reactive measures they can take to protect their trademarks.

Proactive Measures

The Trademark Clearinghouse (TMCH) is an ICANN database of validated and registered trademarks that prevents gTLDs from granting second-level domains containing the trademark. For example, if the trademark “COLLEGEXYZ” is registered in the TMCH, the entity running the new .college gTLD will not be allowed to registered collegexyz.college.

The TMCH is a much simpler and more affordable mechanism than policing every new gTLD and pre-registering one or more trademarks.

Reactive Measures 

If a trademark is not registered in the TMCH, or a confusingly similar domain name is registered, the University can use one of two ICANN resolution systems.

The first, the Uniform Domain Name Dispute-Resolution Policy (UDRP), has been around for more than a decade and allows trademark owners to transfer ownership of domains that were registered or used in bad faith. The process is relatively inexpensive, but fees add up quickly if multiple domains are involved.

The second, the Uniform Rapid Suspension (URS) system, allows trademark owners to quickly address trademark infringement arising from new second-level domains. The process usually takes only a few weeks and is less expensive than the UDRP system.

If an institution detects a second-level domain that incorporates or infringes its mark, it can use the URS to obtain a quick solution that removes the domain, or the UDRP to transfer ownership of the domain to itself.

Conclusions

The proliferation of new gTLDs can potentially create new headaches for colleges and universities. However, by registering in the Trademark Clearinghouse and actively policing their marks, institutions can prevent or quickly respond to many of the potential issues that may arise.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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