With the upcoming release of so many new gTLDs, trade
mark owners may find cybersquatting becoming a more substantial
With the introduction of new generic top level domains (gTLDs)
comes a renewed threat of cybersquatting. Trade mark owners who
wish to protect their trade marks from being registered by other
people as second level domain names (2LDs) for the new gTLDs should
consider having their trade marks registered with the new Trademark
In July 2013, ICANN will issue approximately 1000 new gTLDs
(with further new gTLDs to be issued in future). There will be an
initial registration period for each new gTLD which will allow
organisations to apply to register their trade marks as 2LDs, such
as www.woolworths.food or www.adidas.sports.
As part of ICANN's program to expand the number of gTLDs,
Clearinghouse has been set up as a global database to assist
trade mark rights holders. Trade mark owners can now register their
trade marks with the Clearinghouse and receive two services from
Sunrise Service which gives a trade mark owner
an opportunity to register in a new gTLD a 2LD matching its trade
mark, before the general public. The Sunrise Service is provided
for 30 days after the release of a new gTLD; and
Trademark Claims Service which provides a
warning notice to any person who attempts to register a domain name
which matches a trade mark registered with the Clearinghouse. If
the person still registers the domain name, the Clearinghouse
notifies the trade mark owner. The Trademark Claims Service is
provided for 90 days after the release of a new gTLD to the
Trade marks that can be registered with the Clearinghouse
include registered trade marks and unregistered trade marks that
have been validated by a court. The new scheme is broader than just
word marks – it also covers combined word and graphic marks,
with the graphic element being disregarded for the purpose of
assessing whether a 2LD is a match.
Applications to register trade marks with the Clearinghouse
require certain information to verify the trade mark, including
ownership details. A declaration of use and a sample of proof of
use are also required for the Sunrise Service.
The fees for registering a single trade mark with the
Clearinghouse are $150 for one year, $435 for three years and $725
for five years.
Although the Trademark Claims Service provides a notice to a
trade mark owner that another person has registered a 2LD which
matches the trade mark registered with the Clearinghouse, it
won't prevent that other person from registering that 2LD.
If a trade mark owner wants to recover a domain name registered
by someone else, it must use one of the available external dispute
resolution avenues, such as the Uniform Domain Name Dispute
Resolution Policy or legal action. The Clearinghouse does not have
its own dispute resolution process.
With the upcoming release of so many new gTLDs, trade mark
owners may find cybersquatting becoming a more substantial issue
again. Trade mark owners should consider whether any of the new
gTLDs are likely to be relevant to their business and, if so,
register their trade marks with the Clearinghouse to take advantage
of the Sunrise Service and the Trademark Claims Service.
You should ensure that any future marks you create are also
registered with the Clearinghouse. We suggest you review your IP
management process to ensure registration of new marks is flagged
as an action, so they are protected from the start.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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