The Internet Corporation for Assigned Names and Numbers (ICANN) has dramatically changed the Internet landscape by permitting third parties to register new generic top level domains (gTLDs). Trade-mark owners will now face serious challenges in ensuring that their trade-marks are not misused or misappropriated online.
ICANN has mandated that Registry Operators of new gTLDs put into effect minimum mechanisms to deal with trade mark disputes for domain names, and it is expected that the Uniform Dispute Resolution Policy (UDRP) will apply to new gTLDs. Another option available to brand owners is the Trade-mark Clearing House (TMCH). By registering a mark with the TMCH, a trade-mark owner will obtain advanced warning of potentially infringing domain names. Moreover, a trade-mark owner may take advantage of the sunrise periods that provide a 30-day first option to purchase and register the domain names that correspond to their trade-marks. This will no doubt become very expensive for trade-marks owners given the sheer number of proposed new gTLDs (over 1,400). Another drawback of the TMCH notification system is that it only applies to exact matches, and will not capture intentionally misspelled or confusingly similar equivalents.
Nonetheless, trade mark owners should consider registering their marks with the TMCH to obtain some level of protection. There is no time limit for submitting trade marks to the TMCH, but the registration process may take up to a month.
To obtain further information about the TMCH, click here.
To view a list of approved gTLDs, as well as the Registry Operator, click here. Some of the approved “strings” include: .diamonds, .photography, .today, .sexy, .land, .construction, .clothing, and .singles.