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Protecting Trademarks on the Internet

posted Mar 15, 2013, 7:33 AM by Ciara Sebastian

At the present time, in order to prevent use of trademarks in Internet domain names by unauthorized users, trademark owners had to resort to the usual types of remedies. The first step was generally to send a cease and desist letter demanding that the infringer quit using the trademark and hand over ownership of the domain name. If there was no response, the trademark owner could then commence an action under the Uniform Dispute Resolution Policy administered by ICANN (Internet Corporation for Assigned Names and Numbers). ICANN is the agency that manages the Internet domain name system.

Starting March 26, 2013, ICANN is launching a new Trademark Clearinghouse to help brand name owners proactively protect their trademarks as new generic Top-Level Domain Names (gTLDs) become available in mid-2013.

Generic Top-Level Domains are those part of web addresses such as .com, .net, and .org that everyone who uses the Internet is familiar with. Right now there are 20 or so gTLDs, but with the opening up of the TLD system to other names, there could literally be hundreds as more and more businesses take advantage of the new expanded gTLD naming system.

The purpose of the Clearinghouse will be to prevent the unauthorized use of registered trademarks in the second level of the new gTLDS (e.g., www.yourbrandname.gtld). It is anticipated that this new system will reduce the number of domain names created that infringe existing trademarks.

In order to take advantage of the Clearinghouse, trademark owners will submit trademark data along with an annual fee. ICANN will begin accepting trademark data starting March 26, 2013. In exchange, the trademark owner will have access to two services that will assist in protecting their marks, a Sunrise Service and a Trademark Claims Service.

The Sunrise Service provides an initial period of at least 30 days before domain names are offered to the general public. This provides a safeguard against others using your registered trademark as part of a domain name before you are able to register your own website with the name.  

The Trademark Claims Service provides warnings to both trademark owners and domain name registrants that a possible infringement exists.  

Both services will greatly simplify the chore of regularly surveying for trademark infringers, which is required in order to maintain trademark rights. This is because, under the common law, failure to take prompt action against infringements can lead to the loss of trademark rights, and the finding by the courts that your mark has become generic. There are several cases of famous trademarks that became generic through lack of vigilance with respect to their unauthorized use, including such well-know names as Cellophane and Escalator.

The fees are based on a per trademark basis and are currently $150/1 year; $435/3 years; and $725/5 years, all in US dollars.

The Clearinghouse has recently published its guidelines regarding eligibility.  

For more information or to discuss the impact of this new service, feel free to contact Colin