Trade-mark owners should act now to protect their trade-mark
As early as April 2013, new top level domain names.
As early as April 2013, new top level domain names
("gTLDs") will be available. New domain names will no
longer be limited to names ending in .COM and .CA. The proposed new
gTLDs include everything from .AAA (applied for by the American
Automobile Association) to .ZULU (applied for by Top Level Domain
Holdings Limited and intended to serve the Zulu nation). There are
also numerous applications for new gTLDs that do not use Latin
The new gTLDs create potential opportunities for trade-mark
owners to expand the use of their brands on the Internet. They also
exponentially increase the risks of trade-mark infringement across
many of the new gTLDs.
Trade-mark owners should now consider whether to register domain
names in any of the new gTLDs in order to secure rights and prevent
appropriation by third parties. Furthermore, trade-mark owners
should also decide whether they want to register their trade-mark
rights in the newly created Trademark Clearinghouse.
Should You Register in the New gTLDs?
Registering domain names that incorporate your trade-mark and
variations of your trade-mark effectively prevents others from
registering those names and trying to use them to divert traffic
from your website. Pursuing this strategy will, however, require
initial expenditures of time, diligence and costs in seeking out
and registering all of the domain names in the various gTLDs that
would be most attractive to cybersquatters. Further, the annual
domain name registration
costs are currently unknown and are at the discretion of each gTLD
registry. This strategy will also require that you continue to
monitor the release of new gTLDs and register your additional
domain names as necessary. The first round of new gTLDs is expected
to be released in April 2013.
Should You Use the Trademark Clearinghouse?
A second protection mechanism that will be available to
trade-mark owners beginning March 26, 2013 is the newly created
Trademark Clearinghouse. This will be a central repository where
owners can register their trade-mark rights and is intended to
protect trade-marks in two ways:
First, the registration of a trade-mark with the Clearinghouse
gives the owner rights to pre-register domain names in new gTLDs 30
days (the "sunrise" period)before the gTLD is available
to the rest of the public. An additional prerequisite to sunrise
eligibility is that the trade-mark must be in use and a suitable
specimen of use be filed with the Clearinghouse.<
Second, once a trade-mark is registered with the Clearinghouse,
a domain name applicant will get a warning notice when attempting
to register a domain name that matches that trade-mark. If the
applicant continues to register the domain name, the trade-mark
owner will be notified of the registration and will be able to take
any appropriate actions including filing a complaint under the
Uniform Dispute Resolution Policy (UDRP) and/or filing a complaint
under the Uniform Rapid Suspension (URS) procedure. The fees for
registering a trade-mark with the Clearinghouse are approximately
US$150 per year and registrations can be made for one, three or
Although the rules seem to be constantly changing, the
preventive benefits of registering crucial trade-marks in the
Trademarks Clearinghouse seem to be advantageous enough to justify
the costs. Please contact any of the IP professionals at Heenan
Blaikie to obtain further information regarding the options for
protecting your trade-marks in the new gTLD program.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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