Urgent Deadlines Approaching to Protect Your Trademark from Misuse on the Internet
Trademark owners prepare. Over the next 6 months, ICANN, the agency charged with global administration of all Internet domain names, will begin a process to authorize as many as 500 new Generic Top Level Domain (gTLD) registries for commercial use. The motive behind this bold move is a good one - to ease the serious bottleneck that came about when the public's voracious appetite for website activity far outpaced the original scheme of gTLD's (.com, .org, .net and so forth). But the potential impact presents challenges to brand owners .
For decades, trademark owners have battled against their trademarks being hijacked as part of someone else's domain address. Trademark laws, as well as ICANN regulations, already provide some legal protection from this practice. Even so, considering that there are no checks and balances in force in registering a domain address and the sheer volume of fresh new terrain that will emerge under this upcoming expansion, it is important to be aware of the deadlines and strategies that may require attention in the coming months.
Two separate launches are under way, each one presenting unique challenges. The first, and most controversial, deals with only a single new gTLD, .xxx. It is this domain that, at least in theory, will serve as a repository for all sites catering to adult entertainment, the single industry that occupies well over half of all Internet activity. ICANN envisions that, by establishing a separate home for this content, it will make adult sites more identifiable, free up other gTLD's for more widely used forms of commerce and improve the reliability of parental controls. The dilemma, of course, is how to keep your brand from being used as a .xxx domain address, as this could damage brand identity, reputation and IP stability. To protect against this, ICANN has created an opt-out process, under which a trademark owner can prevent the trademark from being available for registration as a .xxx domain, similar to the do-not-call list used to avoid telephone solicitors. The opt-out period only runs from September 7, 2011 until October 28, 2011. During this period, trademark owners can sign up to have their trademarks excluded from available .xxx domains. The process is not simple and fees and legal prerequisites may be imposed. Details can be obtained by visiting the ICM Registry website, at www.icmregistry.com.
Only a few months after .xxx gets underway, the second wave will hit. Starting in January 2012, ICANN will commence a 90-day period during which anyone can apply to register and establish a new domain consisting of virtually any word in any language. Once this process is running, you can expect to see not only gTLD's such as .cocacola or .starbucks, but even "personalized" registries such as .johnsmith or .jonesfamily. The requirements for establishing a new personalized registry are severe, and so is the price. A minimum buy-in of $185,000 is required, plus ongoing fees. The initial phase contemplates up to 500 new gTLD registrations, after which there will be a time-out period to assess status. Thus, the potential for trademark abuse is increased. Imagine discovering that your company's trademark is registered on a gTLD bearing the name of your competitor, or simply finding that your trademark is part of a gTLD you never knew existed. As with the .xxx program, ICANN intends to establish a clearance process, a dispute resolution procedure and other opt-out mechanisms to avoid rampant trademark violations, but even this will require resources, and it is unclear how effectively these protections will be.
The Sherman & Howard L.L.C. Intellectual Property department is developing programs to assist our clients who wish to protect their valuable brands through the opt-out process and in designing aggressive strategies to monitor potential brand abuse once the massive flood of new gTLD's begins to unfold early next year.
We hope this information is helpful. If you have further questions about this Client Advisory, please contact David Schachter.
©2011 Sherman & Howard September 6, 2011