UPDATE – New Website Domain Extensions are here: Time to act

Big changes are coming to website domain names in the form of new domain extensions; the 22 historical domain extensions (domains such as. COM, .NET and .ORG) will shortly be joined by up to 1,400 new extensions (domains such as .CLOTHING, .SINGLES, .HOLDINGS and .LIGHTING).

In our previous blog post (https://www.edwincoellp.co.uk/index.php/new-generic-top-level-domain-names-new-gtlds-potential-threats-to-your-trade-marks/) we highlighted the risk to brand owners from the new extensions. Below is a brief update on what is happening, what you can be doing to minimise those risks and how we can assist you minimise the risk and/or if your trade mark is hijacked.

What is happening now?

The first of the new gTLDs have now been delegated to registries and are either available to apply for or will shortly be available to apply for.  Auctions for specific domain names under the .XYZ and .COLLEGE extensions are already underway and an initial application phase or sunrise period for seven domain names .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES will start through the Donuts Inc registry on 26 November 2013. Other new gTLDs  will become available to apply for throughout 2014.

Minimising the risks

Traditionally most businesses have tried to protect their trade marks and brands online by purchasing the domain names containing their trade mark (or similar variations) under as many different extensions as they could (even if they have no intention of using those domains themselves). Given the number of new extensions that are going to be made available in the next few years this approach would likely prove very expensive and time consuming (especially given the variation of different rules for obtaining new extensions from the host of new registries). Below are some routes to minimising the risks:

Trademark Clearing House

The Trademark Clearing House (“TMCH”) appears at first sight to be a great idea: you register your trade mark with the TMCH and then you have the chance to register that trade mark as a domain name before anyone else (“Sunrise Services”) and you will be warned if anyone tries to register a domain name using your trade mark (“Claims Services”).

There are, however, significant drawbacks to the system:

• The TMCH fees are: $150 per year per mark ($435 for 3 years and $725 for 5 years);
• You will likely have to pay further fees to take part in each registry’s Sunrise Services;
• The length of the Sunrise Services will vary between registries;
• You will only be able to register a domain name that exactly matches your registered trade mark;
• If two identical trade marks are registered with the TMCH but separately owned (e.g. they may be registered for different goods or services) then in the case of multiple applications for the same domain the relevant registry may auction that domain name to the highest bidder;
• The Claims Services do not prevent an infringer from registering a domain name that is the same as the brand owners trade mark it merely notifies the trade mark owner that this has happened and it is then up to the brand owner to decide what to do;
• Under the Claims Services the brand owner will only be notified if an infringer attempts to register a domain name that is exactly the same as the registered trade mark. Any confusingly similar domain names or domain names which contain the registered trade mark together with other words or letters will not result in a notification.
• The Claims Services will only be in operation for a very limited time (90 days in most cases) following the opening of each registry to the general public. So even if an infringer attempts to register a domain name with an exact match for the registered trade mark this will not be notified to the brand owner if the infringer registers it on the 91^st day.

Blocking

Some of the new registries will be offering a “blocking” service. Although each registry may differ in its approach, this generally includes the ability to request that certain trade marks and, potentially, trade marks with keywords (e.g. “PEPSISUCKS”) are blocked from being able to be registered as a domain name at that registry by anyone (including the person requesting the blocking). To be able to request a block you will probably have to have your trade mark registered with the TMCH first.

Pre-ordering  BEWARE

A number of companies are offering a “pre-ordering” service where you can register your interest in a domain name(s) with various different new extensions on the basis that this will then not be available to other people once “pre-ordered” by you. You should ensure that you read the small print as it likely specifies that once “pre-ordered” the domain name will not be available to anyone else trying to pre-order that domain name through that specific company only. The “pre-ordering” is therefore unlikely to prevent someone else from (1) “pre-ordering” with another company (and seeing which can register the domain name with the new registry first) or (2) seeking to register the domain name directly with the new registry.

If you need to register your trade mark with a particular new extension then you should consider using the TMCH to be able to take advantage of the Sunrise Services.

Dispute Resolution

If your trade mark does get hijacked (or you are informed under the Claims Services of a potential infringer), there are a number of ways that you can address the situation:

Uniform Rapid Suspension System (“URS”)

With the introduction of the new domain extensions ICANN has introduced the new URS which runs alongside the existing UDRP and is designed to provide a fast-track, low-cost route to the suspension of domain names where such domain names presents a clear-cut case of trade mark infringement. A successful result will end in a suspension of the domain name rather than it being transferred to the complainant, this should be taken into account when deciding whether to use this process.

Uniform Dispute Resolution Policy (“UDRP”)

The UDRP will continue to apply to the new domain extensions. This provides a reasonably low cost way of determining domain name disputes and can be used in all cases. To be successful under the UDRP a complainant must show all of the following:

• The domain name is identical or confusingly similar to a trademark in which the complainant has rights.
• The respondent has no legitimate rights in the domain name at issue.
• The respondent registered and is using the domain name in bad faith.

If the complainant is successful the result will be transfer or cancellation of the domain name.

Court Proceedings

If necessary you can seek to bring trade mark infringement or passing off proceedings to resolve a domain name dispute. This is likely to be the most expensive option and is therefore usually reserved for cases where more than the domain name is at stake.  The URS or UDRP are likely to be more suitable where the dispute concerns just a domain name (s).

For more information about these matters please contact one of our IP lawyers.

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