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20 March 2015
In 2013 ICANN (The Internet Corporation for Assigned Names and Numbers) commenced its roll out of thousands of new Generic Top Level Domain Names. Generic Top Level Domain Names (or GTLDs) in simple terms are the extensions that follow an internet address such as .COM or .NET and essentially assist Internet users either in remembering an address or determining what type of address it is for instance a commercial address (.COM) or a non-profit organisation (.ORG). In the past year many new extensions such as .clothing, .bikes, and .vacations have been released and are set to change the Internet as we know it.
ICANN’s logic behind the introduction of new GTLDs, in short, appears to be that the expansion of the Internet was restricted by the existing GTLDs, previously limited to 22 extensions such as .com, .net, and .biz. In addition, the new GTLDs are intended to assist Internet users in finding the specific types of goods or services they are looking for and assist brand managers by creating descriptive web addresses such as www.nike.clothing,to increase traffic to their website.
In the past, whilst it was relatively easy to monitor infringing domain names due to the limited number of extensions, going forward it will become increasingly difficult for both intellectual property managers and rights holders to keep track of cyber-squatters, without registering their trade marks with one of the ICANN approved centralised databases.
One such database is the Trademark Clearinghouse. The Trademark Clearinghouse allows proprietors of registered marks to register their mark on the database. Once a mark is registered, rights holders are permitted to participate in the so-called “sunrise period” for the release of each new GTLD. The “sunrise period” is essentially a period in which persons with registered trade mark rights have the right of first refusal prior to the release of the new GTLD to the public. The goal of the “sunrise period” is to prevent cyber-squatting as well as ensure that the person with the strongest rights to the domain name receives the right to use the name. In addition to granting rights holders pre-emptive rights the Trade Mark Clearinghouse also provides on-going notification services which inform a trade mark owner when a domain name incorporating their mark has been registered under one of the new GTLDs. Unfortunately this is merely a notification system and does not block the infringing registration.
The above, of course, all comes at a fee to the rights holder. Basic fees to register one trade mark on the database start at around US$150.00 and whilst it does give the rights holder the first opportunity to register the mark, there is of course the usual registration fee for each and every domain name with a new GTLD. Add to this the fact that there are no blocking services available and that each domain name would have to be settled by way of a domain name dispute, it seems that the only option to protect one’s brand is to register as many domain names as possible during the “sunrise period.”