IP Alert: New "Top Level Domains" Could Have Dramatic Effects on Trademark Owners

A forthcoming explosion in potential domain names could have dramatic effects on trademark owners. Trademark and brand owners should take steps promptly to protect their marks.

Until recently, so-called “top level domains,” that part of a domain name address to the right of the dot, were limited to just 23, including the familiar .com, .biz and .net, among others.  However, since 2013, in an widening of the domain name system, over 580 new generic top level domains (“gTLDs”) have become available, and at least 800 more are in process.  Many of the new gTLDs are potentially useful generic terms such as .boutique, .restaurant, .menu and .design.  However, others of the new or proposed gTLDs are potentially disparaging terms that could have a negative impact on a company’s brand.   Among these are .sucks (already available), and .porn, .sex, .adult among others, that are slated to become available in the near future.

There are two primary steps that the owner of a registered trademark can take to protect its marks from being registered in connection with a disparaging term.

First, as noted in our Alert dated March 2013, owners of registered trademarks can register their marks with an entity called  the Trademark Clearinghouse (“TMCH”).  If a mark is registered with the TMCH, the owner will have the opportunity during a “sunrise” period that lasts at least 30 days from the date that a new gTLD is available to  register a domain name using its mark and the new gTLD before the new gTLD is available to the general public.  For example, Coblentz Patch Duffy & Bass would have the exclusive opportunity to register the domain name CPDB.law during the sunrise period following the availability of the .law gTLD.

Second, even if a trademark owner does not register a domain name during the sunrise period, the trademark owner may have the opportunity to object to another party’s registration of a domain name using its registered mark.  The TMCH’s trademark claims service notifies an applicant for a domain name if the requested domain name is using a trademark that previously was registered with the TMCH.  If the applicant proceeds to register the domain name using a registered trademark, the TMCH will notify the trademark owner, who may then take action against the new registrant if it believes trademark infringement or a likelihood of confusion will result.

Since new gTLDs will become available over time, there are a few steps that trademark owners should take to try to cut off disparaging or confusing uses of their marks by third parties:

  1. Register important trademarks with the U.S. Trademark Office (or another official international registry) in order to take advantage of the TMCH benefits.
  2. Register registered trademarks with the TMCH.  A trademark can be registered with TMCH for approximately $150 for 1 year, $435 for 3 years and $725 for 5 years.  Bulk pricing is available for owners of multiple trademarks. Registration is generally handled through a registration service.
  3. Identify the gTLDs that are most important for protecting the trademark/brand.
  4. Monitor the sunrise periods for such gTLDs.
  5. Complete sunrise registrations for the newly available gTLDs.

Important forthcoming dates regarding certain gTLDs include:

  • .sucks – Sunrise period for trademark owners previously registered with the TMCH: March 30, 2015 to May 29, 2015
  • .porn, .adult and .sex:  Open registration available for any party without eligibility requirements (i.e. no trademark registration or TMCH registration required): Opens June 4, 2015

It’s important to note that registration of a trademark with the TMCH for notice purposes is different from registering a particular domain name for use.   Registering a domain name with a new gTLD will be through an accredited domain name registrar.  Each registrar sets the price for registering a domain name using a specific gTLD.

For example, the cost to register a .sucks domain name during the sunrise period costs $2,499 for a single year.  This option is available only for trademarks that have already been registered with the TMCH.  Following the expiration of the sunrise period, .sucks domains may be purchased by the general public for $249 per domain per year and domain names can be blocked from registration for $199 per domain per year.

A list of all the new gTLDs current available can be seen at http://newgtlds.icann.org/en/program-status/delegated-strings

For assistance registering your trademarks with the U.S. Trademark Office; registering your  registered trademarks with the Trademark Clearinghouse; tracking sunrise and registration periods; and for other questions regarding trademarks and the new Top Level Domains, contact Karen Frank, 415 772-5739, kfrank@coblentzlaw.com.