Are You Ready for New Generic Top-Level Domains?
By Mark Partridge
The Internet is changing. Domain names are no longer limited to .com, .net or .org—the standard generic top-level domains (gTLDs)—and the less common country code domains (ccTLDs) such as .co, .me or .uk. Hundreds of new gTLDs will start coming online as soon as this month. Are you ready?
Many companies will be turning to the IT department to navigate this new expanded online environment. However, the threats and opportunities available go far beyond the cyber-squatting that has become an unfortunate cost of doing business. With hundreds of new gTLDs to police, IT leaders will need a new strategy to protect the company’s trademarks and other intellectual property (IP).
The Internet Corporation for Assigned Names and Numbers (ICANN), the private entity responsible for managing the global domain name space, signed the first four contracts to launch new generic top-level domain name registries this fall. Hundreds more will follow during the next few months, and a complete list of the applications and their status can be found at www.icann.org.
The new gTLD applications include industry terms such as .cloud, .software, .app and .tech; geographic terms such as .london, .berlin, .africa and .nyc; and brand names such as .chevrolet, .microsoft and .zappos.
There are ongoing discussions regarding the risk of name collisions with the naming conventions used by some internal company networks and the risks arising from a potentially “dotless” Internet. These technical issues merit close attention, and they may dwarf the Y2K challenges that caused concern at the start of the new millennium.
Our focus here, however, is on the challenges presented at the second level—the space to the left of the dot. In the existing .com world, enforcement proceedings and defensive registrations to protect trademark rights have become a common but unwelcome cost of doing business. To meet the new challenges, CIOs should adopt a strategy that includes these steps:
· File trademarks in the Trademark Clearinghouse (TMCH).
· Register desired marks and names in the new TLDs.
· Create an effective enforcement plan.
The TMCH is a database for recording existing trademark registrations and evidence of use. It offers several key benefits:
1. Recording in the TMCH is required to participate in “sunrise registration” in the new gTLDs. This allows trademark holders to secure matching domain names in a new registry before it is open to the public.
2. Recording in the TMCH is also required for IP claims notices. This feature lets applicants know when they attempt to register for a trademarked term, and it also informs the trademark owner.
3. Clearinghouse records may be used to support claims under a new dispute procedure called the Uniform Rapid Suspension (URS) system. This greatly reduces the potential cost of enforcement.
The basic fees for the TMCH are $150 for one year per record, plus legal or agent fees, depending on the amount charged by your advisors.
Domain Name Registration
Obtaining both active and defensive domain name registrations is actually a long-standing best practice in the more familiar world of .com and .net. Securing the rights to a low-cost domain—or even many of them—is quite a bit cheaper than legal action to enforce trademark rights after the fact.
The practicality of this strategy in the expanded Internet is unknown, however. The fees charged for domain names in the new gTLDs will be determined by the registry owner, so it is not yet possible to project potential costs. Given that there will be many new gTLDs with the possibility of a vast number of potential domain name registrations relevant to a company’s brands and business, most companies will want to set priorities and a reasonable budget.
With so many decisions to make and deadlines to track, it is critical to designate filing and management responsibilities in a company. The leaders could include in-house counsel, IT managers, marketing managers and outside experts.
Identify the desired TLDs for active and defensive registrations. The pending applications can be found at the ICANN site. By matching these TLDs with TMCH records, CIOs will be able to identify and obtain potential sunrise registrations.
Companies must also consider terms—such as generic names, geographic designations or future brands—for registration during the “land rush” period when the new gTLDs open for general registration.
Finally, monitor the launch of the new gTLDs to avoid missing critical dates and opportunities.
The goal of enforcement is to prevent cyber-squatting and infringement on domain names when the new gTLDs are in use. An effective enforcement strategy results in less lost business, confusion and damage to company goodwill, as well as the ability to maintain a realistic budget.
The key strategies for implementation include:
· Set parameters for action and work flow. Try to decide in advance what type of uses might merit objections or other actions. Some uses may be more damaging than others. Having a set plan for workflow may improve efficiency and lower costs by saving time, reducing confusion about responsibilities and avoiding second-guessing.
· Monitor IP claims and watch services. One of the benefits of the TMCH is the ability to obtain IP claim notices if someone seeks a matching domain name in a new gTLD. Separate watch services will provide similar services. An effective enforcement plan requires attention to these notes at regular intervals to avoid delay and lost opportunities for early objections.
· Send demand letters. Many disputes can be resolved by sending an email demand, particularly when the applicant is acting in good faith and the demand is supported by solid rights and based on a valid objection.
· Negotiate purchase if appropriate. Not all domain name disputes merit aggressive litigation. Domain names supported by bona fide use may justify payment for transfer. However, be careful not to establish a reputation for payment or it will encourage future cyber-squatting.
· Take legal action when needed. The final step in an enforcement plan involves dispute resolution. That doesn’t necessarily mean a lawsuit. The past two decades of the Internet have yielded several more-efficient enforcement options:
1. All domain name registration contracts in the new gTLDs include use of the Uniform Domain-Name Dispute-Resolution Policy (UDRP). This a contractually mandated form of expedited arbitration based on written submissions, with a decision normally issued within a few months.
2. All new gTLD agreements include adherence to Uniform Rapid Suspension System (URS), another expedited arbitration procedure that can be used to take down an infringing domain name in a few weeks.
3. Cyber-squatting violates federal trademark law and can be challenged in federal court. Potential recovery includes statutory damages of up to $100,000 per domain name.
These changes to the Internet have been in the works for years, yet many of your competitors may not know about them or simply ignore them.
There are hundreds of gTLD applications demanding your attention right now, and others in your industry are already taking action. By following the guidelines in this article, you’ll be able to manage these changes efficiently and effectively.
Mark Partridge is founder of Partridge IP Law, a Chicago-based law and IP strategy firm. He has worked in intellectual property law for more than 30 years and was named one of the top trademark lawyers in the 2012 edition of The International Who’s Who of Trademark Lawyers.