April 4, 2012

Protecting Your Brand in the Expanding Internet

Seller Beware: Consumer Protection Insights for Industry

As we previously described, the Internet is set to expand with the launch of a yet unknown number of new top level domain names ("gTLDs"), some of which may be operational by the year's end. Although the March 29 deadline to register to apply for your company's own gTLD has now passed, brand owners -- including those who decided to forgo the opportunity for their own Internet space via a gTLD -- should remain vigilant throughout the gTLD launch process to protect their trademark rights. Specifically, your company should keep the following in mind:

Objectionable gTLDs. On May 1, 2012 ICANN will publish a list of applied-for gTLDs on its website. Although ICANN has estimated that it will receive between 500 -1,000 applications, some commentators have speculated that this estimate is low. Be ready to review the list for potentially problematic applications. If any applications appear to violate your company's marks, keep in mind that the May 1 publication also triggers a formal objection period, during which brand owners can object to, and potential block, gTLD applications. Formal objections may be founded on four bases, but a "legal rights" objection is most likely to apply if your company did not seek its own gTLD. Legal rights objections must be filed with WIPO before December 1, 2012, and may be granted if the proposed gTL "takes unfair advantage of" or creates a likelihood of confusion with your mark. WIPO's rules for legal rights objections can be found here.

Infringing Second Level Domains.Even if no gTLD appears to threaten your brand, each new Internet space brings with it the potential for infringing second level domain names. For instance, there are already three competing applications for a .music gTLD, a top level domain that may be a concern to any number of brands in the music industry. By way of example, aside from any objections that Def Jam Records may have to the .music gTLD, it would likely also be concerned if a third-party attempted to register ".DefJam" as a second-level domain within the .music space. ICANN has set up procedures, described below, to mitigate such potential infringements. These procedures are not the ultimate solution to protecting your brand in the expanded Internet space, but do offer some advantages to consider.

Trademark Clearinghouse. In October 2012, ICANN expects to launch a "Trademark Clearinghouse" to assist rightful trademark owners, who provide evidence of their rights, in protecting their marks. ICANN has not yet selected providers to manage the Clearinghouse, nor finalized all of the procedures for inclusion -- be on the lookout for more details in the coming months. By including your company's marks in the Clearinghouse, you will be notified if a would-be infringer seeks to register your trademark as a second level domain name within a new gTLD.

IgnoreTrademark Claims Services. Notifications will be given during the "Trademark Claims Services" period, which will run for the first 60 days after each gTLD's public launch. However, notification will only be given if the second level domain is an exact match to your trademark, and it appears that notification alone will not block the potentially infringing registration.

To protect against infringing second level domains more proactively, ICANN will also require the new gTLD registries to offer a "Sunrise Services" period, which is expected to begin at least 30 days before each gTLD's launch. During this time, rightful trademark owners may reserve their mark as a second level domain within the gTLD -- ahead of others who might seek the same name. The Sunrise Services thus effectively offer a "head start" to rightful trademark owners who avail themselves of the services. The new gTLD registries must honor marks included in the Trademark Clearinghouse during the Sunrise Services period, providing an additional advantage to inclusion in the Clearinghouse.

© Arnold & Porter Kaye Scholer LLP 2012 All Rights Reserved. This blog post is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.

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