Intellectual Property Law Alert: Brand Protection in the Era of New Top-Level Domains
When the Internet Corporation for Assigned Names and Numbers (ICANN) released the list of applications for new generic top-level domains (gTLDs) on June 13, 2012, the clock started ticking. Now, brand owners have just over two months left until the January 12, 2013 filing deadline to submit formal objections to the applications submitted. Failure to file an objection could potentially mean waiving the ability to block a new gTLD from going live.
The statistics released by ICANN reveal that 1,930 applications were filed to create 1,409 new, unique gTLDs—that portion of a domain to the right of the last "dot," e.g., the ".com" of www.stoel.com. While the majority of the proposed new gTLDs truly are composed of "generic" terms, approximately one-third of new applications were submitted by brand owners seeking top-level domains incorporating their brand names. (The full list of applicants and applied-for gTLDs is available online here.) Indeed, more than 630 applications were from brand owners for a term that matched their brand, product, or service, while an additional 255 applications were from brand owners seeking generic keywords.
A rights-holder with existing legal rights (either registered or common law trademarks) is eligible to file a legal-rights objection to an applied-for gTLD. To prevail, the rights-holder must show that the applicant takes unfair advantage of the distinctive character or reputation of the mark, unjustifiably impairs the distinctive character or reputation of the mark, or otherwise creates a likelihood of confusion between the applied-for gTLD and the mark.
If an objection is successful, the application will be rejected and the objecting party will be entitled to a partial refund of its fees. If the applicant fails to respond to the objection within 30 days, the applicant will be in default, and the objection will be successful (but the objecting party will not be entitled to a refund of fees). The cost to prepare and file a legal-rights objection is not insubstantial. Total costs will be $10,000 to $23,000 in filing and adjudication fees, plus attorney fees. Legal-rights objections must be filed by January 12, 2013.
What You Can Do
Many brand owners have already reviewed the list of applied-for gTLDs to determine whether any conflicts exist with their brands. If you haven't done so, there is still time. The list can be used to identify gTLDs that potentially conflict with established trademarks or incorporate industry keywords, as well as applications by competitors or interest groups of concern. Compile a list of problematic applications, including gTLDs that are relevant to your industry or sought after by your competitors and those that pose the most risk of gray-market and counterfeiting issues. Once you've identified the gTLDs that cause the most concern, you can develop a strategy for dealing with them, including by filing formal objections.
Even if a review of the list does not turn up any conflicting gTLDs, brand owners should start planning for the period after approved new gTLDs go live. Currently, brand owners need only monitor and police the improper registration of their brands and marks as second-level domains in 22 operating gTLDs. ICANN's goal, however, is to have up to 1,000 new gTLDs go live in the first year after the application process is complete. Brand owners will need to review and evaluate their current monitoring and policing strategies to determine how best to deploy their resources to effectively combat the potentially significant increase in bad-faith registration that is likely to occur.
Fortunately, brand owners will have new options for protecting their intellectual property once the new gTLDs go into effect. First, new gTLD operators must offer a "sunrise" service during the 30-day period before the launch of the gTLD, giving brand owners with registered trademarks the option to seek pre-registration of second-level domains using their marks. Second, new gTLD registrants must participate in a Trademark Clearinghouse during the first 60 days of the gTLD launch. The Clearinghouse will notify brand owners who have registered their marks with the Clearinghouse of potentially infringing second-level domains. These notifications, however, are limited to identical matches, so brand owners are advised to engage additional domain-watch services.
For more in-depth analysis on strategies to protect your intellectual property, please contact a Stoel Rives IP attorney.