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Intellectual Property and IT update: New domain name system — New threats for trade mark owners! Act now for protection.

Mar 25, 2013

The birth of the new generic top level domains

The traditional ‘.com’ and ‘.com.au’ domains are about to become decidedly ‘old school’.

ICANN, the Internet Corporation for Assigned Names and Numbers is in the process of considering close to 2000 recently filed applications for new ‘generic top level domains’.  This means that suffixes like ‘.cars’, ‘.shop’, ‘.news’, ‘.reviews’, ‘.melbourne’ and other similar words may be registered as top level domains. This will enable new domain names to be created to sit alongside those in the overcrowded ‘.com’, ‘.net’, ‘.com.au’ and similar spaces. As a result, we will see new website addresses that look like “www.astonmartin.cars” or “ www.paperback.reviews”. 

While close to 2000 new generic domains are being considered for approval, over time, additional ‘top level’ domains are likely to be introduced. ICANN predicts there will be between 300 and 1000 registered every year.

The successful applicant for a new top level domain will administer it, in the same way that the current domains are administered by Melbourne IT, NetRegistry and similar registration businesses.

Once the current crop of new ‘top level’ domains have been approved, ‘second level’ domain names within these domains (e.g. the ‘macys’ in ‘macys.shop’) will then become available for registration by interested parties.

The Trade Mark Clearinghouse

With new domain names come new opportunities for ‘cybersquatting’, a term that describes the bad faith registration of another’s trade mark as a domain name. With this in mind, ICANN has set up a ‘Trade Mark Clearinghouse’, which opens on 26 March 2013. The Clearinghouse provides a facility for trade mark owners to have priority access to registration of these new second level domain names, before others, including cybersquatters, can get to them! 

So how will it work? Trade mark owners from around the world will be able to record their trade marks with the Clearinghouse. The Clearinghouse will act as a single database containing verified information about the trade marks so recorded. Once a trade mark has been recorded on the database, the brand owner will be able to have access to various benefits and services, described below. 

To begin, the trade mark owner will have access to the ‘Sunrise Service’. Once a new generic top level domain (for example, ‘.cars’) becomes open for registration, brand owners who have pre-registered with the Clearinghouse will be given a specified ‘sunrise’ period (typically 30 days) to register their trade mark as a second level domain in the new domains (e.g. Aston Martin could register ‘astonmartin.cars’ once the ‘.cars’ domain goes live).

During the Sunrise Period, and for at least 60 days following it, an applicant for registration of a second level domain will be notified if the chosen domain name exactly matches one of the trade marks recorded in the database. This is intended to give such applicants the opportunity to select an alternative, non-conflicting domain name and thereby avoid a dispute with the trade mark owner. 

If the applicant elects to proceed with the registration despite the notification of a conflicting trade mark, the trade mark owner will be notified, enabling them to take action against such registrants immediately. This is a distinct advantage over the systems operating in respect of traditional domains, where the trade mark owner either has to constantly monitor each domain of possible interest or otherwise wait to become aware of the offending name, sometimes only after brand damaging uses have been made.

The new system also includes a dispute resolution mechanism, somewhat similar to the familiar Uniform Dispute Resolution Policy, whereby a trade mark owner can ‘freeze’ the domain name pending resolution of the issue with the applicant.

Some limitations

There are some considerable limitations with the new system, including the following:

  • The system is only available for registered trade marks (as opposed to “common law” trade marks);
  • Registration is not sufficient- the trade mark owner needs to provide proof of its use of the trade mark as well in order to be registered with the Clearinghouse;
  • A second level domain name will only be blocked and a brand owner only notified  when the party seeking to register the domain name applies for one that is an exact match with the trade mark registered in the Clearinghouse.  Minor variations, such as misspellings, will not be caught; and
  • The new system does not create any new legal rights per se.  It is, rather, a system for identifying potential trade mark infringements and notifying the trade mark owner of a potential issue.

Should you register your trade mark with the Clearinghouse?

Registering your trade mark with the Clearinghouse is an inexpensive ‘peace of mind’ measure that will afford you an opportunity to gain priority access to the pre-registration periods for each new Generic Top Level Domain.

While this process is likely to be particularly attractive to owners of high profile consumer brands, brands that are susceptible to criticism sites, and brands that are registered in numerous jurisdictions by different owners, experience tells us that any trade mark may be a cybersquatting target. Submitting your key trade marks to the Clearinghouse is a recommended defensive strategy.

KCL Law can assist you in evaluating the advantages and opportunities of registering your trade mark with the Clearinghouse and help with the process.

More information

For more information, please contact Jeremy Goldman on (03) 8600 8886 or jgoldman@kcllaw.com.au or Daniel Kovacs on (03) 8600 8859 or dkovacs@kcllaw.com.au.

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