The Franchise Memorandum

As Gray Plant Mooty reported in Issue 157 of The GPMemorandum, the international corporation that controls internet domain names, ICANN, will soon allow companies to operate hundreds of new Generic Top-Level Domains (gTLDs)—URL extensions to the right of the “dot.” Examples include product and service groups such as .coffee, .food, and .restaurant, and geographic locations such as .boston and .nyc. A few hundred of the gTLDs that are expected to be approved are “open,” as opposed to being restricted to certain companies (e.g., .google) or other groups. The first group of approved gTLDs may begin accepting priority registrations for second-level domain names (which appear to the left of the “dot”) as early as July or August 2013. As part of this program, brand owners can register their marks for inclusion in the Trademark Clearinghouse, a global repository for registered trademarks (or those validated by a court) intended to enhance trademark protection and facilitate dispute resolution in every new gTLD.

Registration with the Clearinghouse will be available on an ongoing basis as new gTLDs are individually approved and rolled out. The Clearinghouse will support two programs designed to help trademark owners protect their marks as the gTLD program progresses: Sunrise registration periods and Trademark Claims notifications. First, each new gTLD operator will open a Sunrise registration period that will last thirty or sixty days, during which time registrants with the Clearinghouse will have the opportunity to register their trademarks as second-level domain names in advance of the general public. This mechanism is designed for those brand owners that like to be proactive in acquiring domain names matching their brands, and in preventing others from doing so. Second, the Trademark Claims Service will operate for the first ninety days of open registration as a notification system, whereby a third party that seeks to obtain a domain name that matches a brand that is registered in the Clearinghouse will be warned of the potential conflict. If the domain name is nevertheless registered, the trademark owner will be notified.

The ability to initiate a challenge to a legally infringing domain name will remain even if one does not register with the Clearinghouse before infringement arises. While early registration in the Clearinghouse will have benefits, traditional remedies against infringing domain names, such as Uniform Domain-Name Dispute-Resolution proceedings and court actions, will continue to be available if a brand owner chooses to forgo Clearinghouse registration at this time. However, trademark rights holders should familiarize themselves with the benefits and requirements of a Clearinghouse registration, and should consider registering at least their primary brands. For more information about the Clearinghouse, or the new gTLD program, please click here.