Protecting Trademarks from New Top Level Domain (TLD) Infringement

On January 12, 2012 the Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications for registration of new generic top level domain (gTLD) names. Top level domain (TLD) is the character string to the right of the period following the domain name, for example, “.gov.” The applications for gTLDs were accepted until May 30, 2012, and as of March 18, 2013, 1930 applications were submitted. On March 13, 2013 the period for submitting objections to registration of gTLDs ended. In mid-April ICANN will publish those objections that require applicant’s response.

Submission of 1930 applications can have significant implications for owners of trademarks.

Trademark Infringement Recourse Through ICANN Uniform Rapid Suspension System (URS)

For trademark owners who did not submit a timely objection there still remains recourse. ICANN established a Uniform Rapid Suspension System (URS) which in administration resembles a summary proceeding. The party who owns a valid trademark which is used in a registered gTLD can submit a complaint to URS. A 2 day expedited review of the submission will be conducted by the URS provider for compliance with required elements. Upon finding of compliance, the claimed infringing domain will be “locked” within 24 hours, not permitting for any changes to registration data by the registered owner but the domain will still be accessible. The registered owner of the domain will be required to respond to the complaint or risk default judgment. The Examiner appointed by the URS provider will make a decision based on the parties’ filings, no discovery or hearings will be conducted. The complaint will be resolved in the favor of complainant if based on clear and convincing evidence, no issue regarding material facts is found. Upon resolution of the complaint in favor of the complainant, any further access to the gTLD at issue will not permitted for the duration of the its registration period. Appeals of the decision with URS are permitted.

Remedies Beyond the URS

Beyond the URS, the trademark owners who identify infringement can pursue other remedies through available dispute resolution services and courts of competent jurisdiction. URS specifically disclaimed any interference with such rights.

Generic Top Level Domain Registration

The registration submission period for gTLDs only lasted a little over 5 months and the objection period was about 10 months long. Judging from the success, about1930 applications, it is possible that the submission period will be opened once again in the near future. For those interested in taking advantage of the future opportunity, a few important facts are worth noting. During the first submission period two criteria where applied for identifying eligibility for registration:

  1. Upfront registration fee of $185,000; and
  2. Demonstrate the ability to run a registry.

Also, 4 grounds for objecting to a selected string for registration were identified:

  1. String Confusion;
  2. Legal Rights;
  3. Limited Public Interest; and
  4. Community Interest.

Upon receipt of objection, the party submitting the registration must either attempt to negotiate with the objector, file an answer, or withdraw the application. Non-response will result in objector prevailing through default.

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