By Roba Hamam

The latest change in the Internet domain name system (DNS) has produced many headlines concerning intellectual property rights: specifically, the rights of trademark holders. The official launch of Trademark Clearinghouse highlights the measures in ICANN’s generic TLD programme designed to protect an organisation’s legal rights.

The domain name system has been undergoing drastic changes for some time. In addition to the current 22 global top-level domains (TLDs) such as .com, .net., .org, and .info, Internet Corporation for Assigned Names and Numbers (ICANN) has introduced a new Generic Top-Level Domain (gTLD) programme. The main purpose of new gTLDs is to increase choice and business opportunities for entities desiring to expand and develop through the Internet space.

The new gTLD application window opened on 12 January 2012 and closed on 30 May 2012, during which 1,897 active gTLD strings were applied for. This expanding gTLD space will include: .inc, .auto, .city, .shop, .sale, .food, .media, .news, .play, .mobile, .legal, .hotel, .beauty, .bank among many others. Also applied for are non-Latin script gTLDs such as Arabic strings: .عرب، .موقع، .كوم. for example.

The first new gTLDs are expected to be approved by the ICANN as early as mid-2013. Once this happens, registries authorised to operate these new gTLDs will begin to accept registrations for second-level domain names. A second-level domain name is the text string between the “www” and the TLD, and could represent an organisation’s trademark or trade name.

While these new gTLDs may be deemed appealing and important for businesses, potential for legal disputes over the ownership of second-level names also rises. For example, an entity or individual who has no legal association with Sony Music Entertainment may attempt to register “sony” with the .music gTLD registry to create and operate a “www.sony.music” domain name.

To prevent such exploitative practices in the gTLD space, ICANN has put in place new Trademark Rights Protection Mechanisms. Among the mechanisms designed to provide protection to trademark owners is Trademark Clearinghouse (TMCH). TMCH is a centralised database of verified registered trademarks. Registering trademarks with TMCH offers trademark owners two unique services that allow them to protect their trademarks during the launch and take-off periods of every new gTLD.

Sunrise Period: Once a new gTLD is launched by its registry operator, trademark owners who have registered their trademark with the TMCH database are entitled to a sunrise period of 30 days. This enables them to secure second-level domain name that are identical to their trademark within that gTLD space before applications are open to the wider public. Once this sunrise period ends, anyone can attempt to register any second-level domain name in that gTLD space.

Trademark Claims: Within the first 90 days of the launch of a new gTLD, should an entity or individual attempt to register a second-level domain name that matches a trademark present in the TMCH database, that person or entity will receive a warning and information about the trademark. If they decide to proceed with the registration despite the warning, Trademark Clearinghouse will send a notice to the owner of the trademark in question about the registration in progress.

The purpose of TMCH is to help trademark owners manage and protect their rights during the expansion of the DNS. This service, however, is not bulletproof and is yet to be tested. In particular, the period of time covered by the trademark claims service is only 90 days per new domain name registration. After this period, the trademark owner will no longer receive any notices should a third-party attempt to register a second-level domain name that matches their trademark as listed in the TMCH database. Furthermore, even after the receipt of said notice, the trademark owner will still have to resort to the traditional dispute resolution remedies as TMCH is only a repository that has no impact on dispute resolution. As such, trademark owners will question whether a multi-year registration (and subsequent renewals) of their mark with TMCH is worth it.

Nonetheless, there is no doubt that TMCH is a step towards acknowledging trademark owners’ rights and making it easier for them to prevent and track potentially infringing second-level domain name registrations.

Statistics on gTLD applications are available here.

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