What You Need to Protect Your Brand In A New gTLD World

The most controversial aspect of the New gTLDs was figuring out how the registries would protect against trademark infringement. Specifically, from the trademark and brand owner perspective, the New gTLDs were seen as a terrible idea because it would give cybersquatters, phishers and bad actors of all types more space to infringe on registered marks and would therefore require more time, money and resources to police.

In order to mitigate the potential damage to brand owners, a central trademark database called the Trademark Clearinghouse (TMCH) was created. The TMCH acts a central repository for anyone with a registered (via a national trademark authority) mark and allows them to do the following:

• Take Advantage of “Sunrise” Registrations. TMCH registered marks will have the chance to register domain names in new registries at least 30 days prior to the general public. So, if your company is a bank called FIRST NATIONAL, you will probably be interested in registering your domain in the .bank New gTLD. The TMCH provides the opportunty to register before anyone else.
• Receive Notifications of Infringing Domain Registrations. Anyone who tries to register your exact mark or a listed variation will, for a limited time after the Sunrise period, get a “Notification of Registered Name” (NORN) informing them that they're about to register a name that's covered by a trademark. If they proceed, the mark holder is notified.
• Protection for Previously Abused Domains. Domain names that have been found to be the subject of abusive registrations (for example, as a result of a Uniform Domain Name Dispute Resolution Policy (UDRP) or court proceeding), a limited number (up to 50) can be added to a TMCH record.
• Assist in Recovery Actions. If someone takes your name in a New TLD, you can file a “Uniform Rapid Suspension” (URS) action and quickly get their domain taken down. If your mark is in the TMCH, that shows immediate evidence of use, making your filing easier. This should also help if you have to file a domain dispute complaint under the UDRP.

What TMCH Does Not Protect Against

The TMCH is not perfect and the systems shortcomings are obvious and well documented.

First, the TMCH won't help if a cybersquatter registers a domain name that uses your trademark but is not an exact match or listed variation ' so you won't get a notice and nothing will stop the person or entity from registering the domain if it doesn't fall into this narrow band of listed names.

Second, the new registries are only obligated to participate in the notification system of the TMCH for roughly 60 days after the Sunrise registration period ' although this could change.

Third, even when the TMCH works perfectly, you still have to pay for the domain name (that would likely infringe on your rights) to make sure it's “off the market,” which too many people feels like a form of domain extortion.

And lastly, there will now be hundreds of new registrars in the system to deal with. Some of them will be good and others bad ' the bad registrars won't help when there are issues concerning the TMCH or follow the basic protocols issued by ICANN.

What Your Protection Tool-Belt Needs

The TMCH is a useful tool for registered trademark holders, so brand owners would be wise to use the system, but it's not enough to protect your valuable marks by itself.

ICANN has put a great deal of time and effort in considering how to implement the New gTLD system, but the effect of an expanding Internet on brand owners ' as well as helping them deal with the bad actors looking to take advantage of registering domain names with famous trademarks ' is not something that ICANN considers part of its core mission.

The New gTLD world will be more complicated and require more time and resources from companies and their counsel. Further, it is extremely fluid as ICANN is changing the rules on the fly and the TMCH system and rules will no doubt be changed in the future. In order to deal effectively with this evolving world it is important for companies (of all sizes) to have a plan in place to meet this challenge. Here are some actions that brand owners and their counsel should take immediately to deal with this evolving space:

• Delegate. Whether you are a Fortune 500 company or a start-up on a tight budget, you need to delegate someone, anyone, to be in charge of following the New gTLD space. This does not have to be a legal professional. An intern or marketing associate will do fine, but someone needs to be in charge of following and reporting on domain issues that could negatively affect your company and its bottom line.
• Monitor. Make sure at regular intervals (daily, weekly or monthly) that you are checking to see what is going on in key or relevant registries. So, if your company is a financial institution make sure you are checking on the .bank, and .money registries, if you're a music company check on .tunes, .song, and .music. You can do this by signing up with a domain monitoring service that will provide you with regular updates.
• Register Your Mark(s) with the USPTO. You can't use the TMCH without a federally registered trademark, so make sure you register names that you want to protect.
• Enforce Your Rights. The URS and UDRP can help deal with a domain issues quickly and effectively. Both are much cheaper and faster than a lawsuit and these decisions can be used to preclude others from registering similar domains names in new registries later on.

For brand owners and their counsel, the world of New gTLDs will present a real challenge to their brand protection protocols and programs because it will require reliance on a variety of tools. The TMCH is an important part of this but is just one piece of a broad and coordinated monitoring program.

David K. Mitnick is the Founder and President of DomainSkate, LLC, a domain name arbitration dispute facilitator. Prior to starting DomainSkate, Mitnick spent 10 years as an intellectual property lawyer with Amster Rothstein & Ebenstein LLP in New York, working in all phases of intellectual property law including trademark licensing and prosecution, patent and copyright litigation and Internet law. He serves as the Advisory Board Chairman of the Brooklyn Law School Trade Secrets Institute. He can be reached at [email protected].

For nearly a decade the organization that runs the main root zone of the Internet, the International Corporation for Assigned Names and Numbers (ICANN), has been working on a plan to expand the Internet. (See my article in the July 2013 issue of Internet Law & Strategy, “The Great Internet Land Rush.”) That process is underway right now, and the expansion will be taking place in just a few months as a slew of top level domains like .nyc, .apple, .citi, .green, .apple, .app, .llc, .club and hundreds more will be going live in the next few months.

In order to deal with this expanding Internet, brand owners need to understand how to use a variety of tools to handle the different brand protection and legal challenges that will be presented. For brand owners looking at the New gTLD space, formulating a trademark protection strategy should be viewed as an important tool on an entire tool belt of protection strategies that together can be used as a comprehensive plan.

Protection for Trademark Holders

The most controversial aspect of the New gTLDs was figuring out how the registries would protect against trademark infringement. Specifically, from the trademark and brand owner perspective, the New gTLDs were seen as a terrible idea because it would give cybersquatters, phishers and bad actors of all types more space to infringe on registered marks and would therefore require more time, money and resources to police.

In order to mitigate the potential damage to brand owners, a central trademark database called the Trademark Clearinghouse (TMCH) was created. The TMCH acts a central repository for anyone with a registered (via a national trademark authority) mark and allows them to do the following:

• Take Advantage of “Sunrise” Registrations. TMCH registered marks will have the chance to register domain names in new registries at least 30 days prior to the general public. So, if your company is a bank called FIRST NATIONAL, you will probably be interested in registering your domain in the .bank New gTLD. The TMCH provides the opportunty to register before anyone else.
• Receive Notifications of Infringing Domain Registrations. Anyone who tries to register your exact mark or a listed variation will, for a limited time after the Sunrise period, get a “Notification of Registered Name” (NORN) informing them that they're about to register a name that's covered by a trademark. If they proceed, the mark holder is notified.
• Protection for Previously Abused Domains. Domain names that have been found to be the subject of abusive registrations (for example, as a result of a Uniform Domain Name Dispute Resolution Policy (UDRP) or court proceeding), a limited number (up to 50) can be added to a TMCH record.
• Assist in Recovery Actions. If someone takes your name in a New TLD, you can file a “Uniform Rapid Suspension” (URS) action and quickly get their domain taken down. If your mark is in the TMCH, that shows immediate evidence of use, making your filing easier. This should also help if you have to file a domain dispute complaint under the UDRP.

What TMCH Does Not Protect Against

The TMCH is not perfect and the systems shortcomings are obvious and well documented.

First, the TMCH won't help if a cybersquatter registers a domain name that uses your trademark but is not an exact match or listed variation ' so you won't get a notice and nothing will stop the person or entity from registering the domain if it doesn't fall into this narrow band of listed names.

Second, the new registries are only obligated to participate in the notification system of the TMCH for roughly 60 days after the Sunrise registration period ' although this could change.

Third, even when the TMCH works perfectly, you still have to pay for the domain name (that would likely infringe on your rights) to make sure it's “off the market,” which too many people feels like a form of domain extortion.

And lastly, there will now be hundreds of new registrars in the system to deal with. Some of them will be good and others bad ' the bad registrars won't help when there are issues concerning the TMCH or follow the basic protocols issued by ICANN.

What Your Protection Tool-Belt Needs

The TMCH is a useful tool for registered trademark holders, so brand owners would be wise to use the system, but it's not enough to protect your valuable marks by itself.

ICANN has put a great deal of time and effort in considering how to implement the New gTLD system, but the effect of an expanding Internet on brand owners ' as well as helping them deal with the bad actors looking to take advantage of registering domain names with famous trademarks ' is not something that ICANN considers part of its core mission.

The New gTLD world will be more complicated and require more time and resources from companies and their counsel. Further, it is extremely fluid as ICANN is changing the rules on the fly and the TMCH system and rules will no doubt be changed in the future. In order to deal effectively with this evolving world it is important for companies (of all sizes) to have a plan in place to meet this challenge. Here are some actions that brand owners and their counsel should take immediately to deal with this evolving space:

• Delegate. Whether you are a Fortune 500 company or a start-up on a tight budget, you need to delegate someone, anyone, to be in charge of following the New gTLD space. This does not have to be a legal professional. An intern or marketing associate will do fine, but someone needs to be in charge of following and reporting on domain issues that could negatively affect your company and its bottom line.
• Monitor. Make sure at regular intervals (daily, weekly or monthly) that you are checking to see what is going on in key or relevant registries. So, if your company is a financial institution make sure you are checking on the .bank, and .money registries, if you're a music company check on .tunes, .song, and .music. You can do this by signing up with a domain monitoring service that will provide you with regular updates.
• Register Your Mark(s) with the USPTO. You can't use the TMCH without a federally registered trademark, so make sure you register names that you want to protect.
• Enforce Your Rights. The URS and UDRP can help deal with a domain issues quickly and effectively. Both are much cheaper and faster than a lawsuit and these decisions can be used to preclude others from registering similar domains names in new registries later on.

For brand owners and their counsel, the world of New gTLDs will present a real challenge to their brand protection protocols and programs because it will require reliance on a variety of tools. The TMCH is an important part of this but is just one piece of a broad and coordinated monitoring program.

David K. Mitnick is the Founder and President of DomainSkate, LLC, a domain name arbitration dispute facilitator. Prior to starting DomainSkate, Mitnick spent 10 years as an intellectual property lawyer with Amster Rothstein & Ebenstein LLP in New York, working in all phases of intellectual property law including trademark licensing and prosecution, patent and copyright litigation and Internet law. He serves as the Advisory Board Chairman of the Brooklyn Law School Trade Secrets Institute. He can be reached at [email protected].