Protecting Trademarks in Domain Names: Rights Protection Mechanisms (RPMs) for Small Business FaProtecting Trademarks in Domain Names
Following years of discussion and consultation facilitated by the Internet Corporation for Assigned Names and Numbers (ICANN), the Internet’s domain name system (DNS) is expanding. The DNS is a critical component of the Internet infrastructure. It works like a telephone directory, allowing users to reach websites using easy-to-understand domain names (e.g., http://www.commerce.gov) rather than the numeric network server addresses (e.g., http://220.127.116.11) necessary to retrieve information on the Internet. The expansion of the DNS involves the addition of hundreds of new generic top-level domain names (gTLDs) entering the marketplace beyond the current .com, .org, and more. This expansion is expected to provide a platform for communities and innovators to harness the power of the global Internet in new ways.
It is important for American businesses to stay apprised of developments in this area in order to benefit from the new opportunities as well as protect their business interests. The U.S. Government has worked to ensure that the new gTLDs program provides adequate safeguards to prevent consumer and business harms. In particular, ICANN’s new gTLDs program includes several Rights Protection Mechanisms (RPMs) to aid trademark owners in protecting their trademarks that are unavailable in the legacy gTLDs (e.g., .com, .net, .biz, .info). The RPMs include the Trademark Clearinghouse and the Uniform Rapid Suspension process.
- The Trademark Clearinghouse (TMCH) is a central repository of trademark registrations. Marks that may be entered into the TMCH include nationally or regionally registered word marks from any jurisdiction as well as any word mark that has been validated through a court of law or other judicial proceeding. The TMCH provides information to the new gTLD registries to support two important services before the launch of any new gTLDs: the Sunrise Period and the Trademark Claims Service.
- The Sunrise Period is a pre-launch phase providing trademark owners the opportunity to register domain names in a TLD before registration is generally available to the public. Trademark owners are required to provide evidence of use in order to take advantage of the Sunrise Period. Providing a Sunrise Period is mandatory for all new gTLDs and must be offered for a minimum of 30 days before launch.
- The Trademark Claims Service notifies the domain name applicant that its domain name matches a trademark in the Clearinghouse, thereby alerting the applicant to a potential conflict, to reduce the incidence of trademark violations. If the domain name applicant acknowledges the notice but registers the domain name, a notice is sent to the trademark owner for possible further action. The Claims service is mandatory for all new gTLDs and must be available for at least the first 90 days that registration is opened. There also is a free Ongoing Notifications service thereafter, which lasts the life of the trademark registration record in the TMCH.
- The Uniform Rapid Suspension (URS) system offers an immediate and cost-effective form of dispute resolution for use in the clearest indisputable cases of cybersquatting. Proceedings are initiated by electronically filing with a URS provider (currently two providers) outlining the trademark rights and the actions complained of entitling the trademark holder to relief. Domain names found to be infringing are suspended. Trademark owners can file a claim with the URS for an estimated $360-$500 per complaint.
Further, all new and existing gTLDs must adhere to the existing Uniform Domain Name Dispute Resolution Policy (UDRP), a low-cost and expedited alternative to court for cases of cybersquatting. Successful UDRP complaints result in the domain name being transferred to the trademark owner.
Entities wishing to federally register their trademark rights with the U.S. Patent and Trademark Office (PTO) can do so for as little as $275 per class of good or services, available at TEAS (Trademark Electronic Application System). The advantages of federal registration include public notice of claim of ownership and entry into the USPTO searchable database, presumption of ownership and exclusive right to use the mark nationwide, and ability to input the registration into the TMCH. For more information on these RPMs, please visit the ICANN website.