Intellectual Property Bulletin - Summer 2013: ICANN Set to Launch New Generic Top-Level Domains: Understanding the Nuts and Bolts

by Fenwick & West LLP
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The universe of generic top-level domains (gTLDs), currently limited to about a dozen such as .com, .net, and .org, will expand this year, as some of the more than 1,000 potential new gTLDs are rolled out. Businesses may want to use some of these gTLDs—such as .store, .cloud, .software, .app, .home, and many more—as part of their brand strategies.

The Internet Committee for Assigned Names and Numbers (ICANN) has been reviewing new gTLD applications on a rolling basis. On July 15, 2013, ICANN announced the first three approved gTLD applicants that have signed Registry Agreements, indicating that these applicants are now permitted to begin operating their new gTLD registries:

  • International Domain Registry Pty. Ltd. —  (Arabic for “web” or “network”)
  • Core Association — (Russian for “online”) and (Russian for “website”)
  • Spring Fields, LLC — (Chinese for “game”)

Brand owners should think about defensively registering their brand names as second level domains (SLDs) in new gTLDs that are relevant to their specific industries (e.g., www.yourbrand.app, www.yourbrand.cloud). SLD registrants will be given access to two primary rights protection mechanisms provided by all new gTLD operators:

  1. Trademark Clearinghouse. The Clearinghouse is a trademark registration database that ICANN requires each new gTLD registrar to cross-reference when someone tries to register an SLD that is identical to a brand in the database. Brand owners can deposit their marks in the Clearinghouse at http://trademark-clearinghouse.com. Marks must be nationally or multinationally (e.g., the European Union (EU)) registered or otherwise validated by a court. Brand owners must also submit evidence that their marks are in use if they wish to register a given mark as an SLD during a “Sunrise Period.”
  2. Sunrise and Claims Periods. ICANN requires each new gTLD registrar to give Clearinghouse members a first chance at SLD registrations by offering a Sunrise Period of at least 30 days before registrations become available to the general public. Some brand owners will want to use SLDs themselves; others will obtain SLDs simply to keep third parties from registering them.

When a new gTLD registry opens to the general public after the Sunrise Period, ICANN requires it to offer a claims period of 90 days. During this time, registrars must notify a Clearinghouse member if anyone tries to register an SLD that is identical to the member’s deposited mark, and notify the SLD applicant that the attempted registration potentially infringes the mark.

It is important to note that the Clearinghouse does not prevent others from registering a brand owner’s mark as an SLD in a new gTLD registry. The Clearinghouse only 1) Gives brand owners an opportunity to register their brand names as SLDs in a new gTLD before the general public (in the Sunrise Period); and 2) Gives notice to brand owners and SLD applicants that an attempted SLD registration may infringe a mark in the Clearinghouse (in the claims period). Given the limitations inherent in these rights protection mechanisms, in addition to defensively registering their brand names, brand owners should also consider expanding existing domain name policing efforts to include the new gTLD space.

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Fenwick & West LLP
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