Topic: Brands
Who: ICANN
Where: Los Angeles
When: 26 March 2013
Law stated as at: 5 April 2013
What happened:
Domain name giant ICANN’s new “Trademark Clearinghouse” opened for business on 26 March 2013.
Should brand owners be registering on the Clearinghouse list?
The story started in 2011, when the Internet Corporation for Assigned Names and Numbers, which oversees the global website domain name system, announced a plan to dramatically expand the available top level domain names (“gTLDs”) from the existing 22 (e.g. .com, .org, .net and lesser known .aero and .museum).
The objective was to increase competition and choice in the domain name space.
Under the new regime it would be possible for any business to apply to run a registry for a new gTLD which could be either generic, for
example “.law” or “.bank” or brand-specific, such as “.mcdonalds.”
$185,000 cost of applying
Applications were invited, the catch being that running such a registry would not be cheap, with six or seven figure price tags mentioned just for annual running costs, and a fee of $185,000 payable just to
file an application.
One potential way of recouping these costs, for successful applicants for generic gTLDs at least, would be the selling of permits to third
parties to use second level domains. For instance, the owner of the
“.law” gTLD registry might be willing to sell Osborne Clarke the
right to use “osborneclarke.law.”
Despite the cost, by summer 2012, 1,930 applications had been received for 1430 gTLDs. After publication of application details, stakeholders took the opportunity to lodge their objection to applications by the objection deadline of 13 March 2013.
New gTLDs could be operational in May 2013
Whilst certain of these applications will be rejected or go into the laid-down auction procedure (in the case of multiple applications for the same gTLD), uncontested and successful applications could become fully fledged Registries from as early as May 2013.
Where the new gTLD owner chooses to operate an open registry and offer second level domains for sale or lease, businesses and individuals will then be able to apply to these Registries for the right to use domain names rooted at the new gTLDs.
Two key rights protection mechanisms available for brand owners
So how can brand owners who have not applied to run registries protect their brands from potentially conflicting new second level
domains under the gTLDs?
This takes us back to the ICANN Trademark Clearinghouse that opened on 26 March 2013.
The idea is that the Clearinghouse forms a single, central database
of validated trade marks, which all those running new gTLDs are required to refer to when they launch.
The filing fee for a single brand for a year is between $95 and $145 depending on a complicated discount system.
There are two key benefits or “rights protection mechanisms” as they are called, which arise from being on the Clearinghouse list (“Listed
Brand”). These are participation in “sunrise periods” and automatic dispatch of “Trademark Claims Notices.”
Sunrise benefit
The “sunrise period” benefit relates to the “sunrise period” which applies to all new gTLD registries being launched.
This period must be at least 30 days. While it is running, owners of Listed Brands that exactly match the new gTLD in question can register equivalent domain names before any other business gets the chance to register.
Where being on the Clearinghouse list helps here is that every new gTLD registry operator must give at least 30 days’ notice of their sunrise period to all owners of Listed Brands. That way they get an early heads up, which could be important if registries are only operating the minimum 30 day sunrise period
The second benefit of being a Listed Brand arises if there is any attempt by a third party to register a gTLD which is an exact match for a Listed Brand. In this event, the third party will be automatically sent a Trademark Claims Notice informing them of the conflict.
If, despite this, the third party persists with the registration of the Listeed Brand as a domain, the owner of the Listed Brand will be notified, although they cannot prevent the registration. Dispute resolution procedures will be made available, in line with ICANN’s current rules, so that brand owners can seek the transfer into their own ownership of infringing domains registered by third parties. The only way that brand owners will be able to prevent a third party
from registering a domain which matches one of their Listed Brands will be to purchase the domain themselves within the sunrise period.
Why this matters:
Critics say the Clearinghouse benefits are limited as they do not extend to applications for second level domains which are similar (but not identical to) Listed Brands and therefore offer no protection against “typosquatters” who buy groups of mis-spelt domain names, looking to benefit from the confusion this may cause.
In recognition of this, just before the Clearinghouse opened, ICANN announced that brand owners would be able to register up to 50
variations on their marks on the Clearinghouse list, provided they paid the registration fees of course.
This will only be possible, however, if the brand in question has previously been the subject of a dispute and controversy continues
as to whether the entire new gTLD regime will end up being a curse or a blessing for established brand owners who, whether or not they are on the Clearinghouse list, face potentially significant increases in brand protection costs if multiple dispute resolution proceedings have to be launched.
Curse or not, the new gTLD landscape system seems unstoppable and, as it is as global as the internet, all UK brand owners should
at least consider filing for an entry on the Clearinghouse list and taking advice.
More information is at http://newgtlds.icann.org/en/about/trademark-clearinghouse.
