Protect More Than Your Rights Online

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( — March 25, 2020) — 

How to protect your trademark within the vastness of the World Wide Web while gaining brand recognition.

From the perspective of a business owner, the unstoppable growth of the Internet and eCommerce does not only create opportunities, but also a lot of challenges. That is especially accurate when it comes to protecting intellectual property in the online marketplace. Applying for a trademark can help mitigate some of these challenges. It comes with benefits like brand promotion or improved web security, to only name a few. 

The purpose of trademark law is to avoid confusion and to prevent your competition from using a name, word, or phrase that you own. Having a registered trademark makes it easier for you to enforce your rights as a trademark owner as the mark is publicly listed. Today, trademark protection also applies within the digital world, including with regards to your domain name. The domain name of your business is vital to developing a successful brand. Using your brand name as your domain name can help customers or clients to locate your address online. The increasing availability of new gTLDs provides more domain name options to choose from, but with the vast number of gTLDs offered, how can you guarantee that nobody else is registering your name before you had the chance to do so yourself, and what can you do if you are too late? Here is the answer: 

The Internet Corporation for Assigned Names and Numbers (ICANN) is a non-profit organization with control over the Internet’s global system of unique identifiers, IP addresses, and generic Top-Level Domains (gTLDs). The organization also oversees the process of approving domain name registrars. In 2013, ICANN adopted a few Rights Protection Mechanisms (RPMs), like Trademark Claims or Sunrise Registrations, that have been built into the new gTLD program to help trademark owners protect their brands. The main purpose of the introduction of new gTLDs was to expand the domain name system (DNS), while each new gTLD is obligated to provide the trademark’s RPMs.

What is the Trademark Clearinghouse? 

As more and more new gTLDs launch, the Trademark Clearinghouse (TMCH) is an important strategy for online brand protection. The primary reason to use the TMCH should be the trademark holder’s intention to register a domain before anyone else can. It has been established as a centralized, global repository/database to support the RPMs in the new gTLD space. Trademarks that can be entered include any nationally or regionally registered word marks or word marks that have been validated through a court of law or other judicial proceeding. Only registrars like 101domain that have been officially accredited by the ICANN can use TMCH certified trademarks.

The process verifies, authenticates, and records rights information. It was designed to meet global needs for the DNS as well as provide information to new gTLD registries and registrars during the registration process. The verified data in the TMCH will be used to support both Trademark Claims and Sunrise Services, required in all new gTLDs.

The Sunrise Service is a mandatory pre-launch phase providing trademark owners advance notice of an upcoming launch of new gTLDs. It gives them the opportunity to register an identical match of their domain name in the chosen gTLD before it is generally available to the public.

The Trademark Claims Service is also mandatory for all new gTLDs. It provides domain name registrants with a notice when they attempt to register a domain name that matches a trademark recorded in the TMCH, which could cause a potential conflict. If the prospective registrant acknowledges the notice and still proceeds to register the domain name, another notification is sent to the rightful trademark owner to act upon. 

Benefits and limitations of registering your brand with the Trademark Clearinghouse

ICANN’s Trademark Clearinghouse can help you to protect your trademark online, but it also has significant limitations. The TMCH is an essential part of the new gTLD program, but there are a number of factors that will impact the effectiveness of online brand protection and security.

The registry is required to offer trademark owners a period of at least 30 days in order to register a domain name. That being said, the Sunrise Period gives the trademark holders an early opportunity to pursue registration of a domain name that corresponds to the trademark, assuming that all eligibility requirements are met. That also eliminates the painstaking monitoring of new gTLD releases. But registering your brand with the TMCH does not mean that you are automatically entitled to a domain name, nor does it guarantee the registration — not even during the Sunrise Period. While the trademark holder will receive notice of the domain launch, he or she will still have to qualify for registration under the rules of each particular new gTLD.

The Trademark Claims Service reduces the incidence of trademark violations, but contrary to common belief, it will not defend against cybersquatting. This service does not prevent someone else from registering a domain name, and the new gTLD operator is only required to offer it for the first 90 days after the launch. During this limited time after the Sunrise Period, the verified trademark holder will be notified when someone seeks to register the corresponding domain names.

What happens if there is a conflict? 

Uniform Domain Name Dispute Resolution Policy comes to the rescue.

What if you find out that someone is already using the trademark you want to use as your domain name without you knowing? As mentioned earlier, only domain name registrars that have been accredited by the ICANN can use TMCH validated trademarks and provide information about the status of a domain name or determine if it is available. If it is unavailable, you can evaluate ownership by using WHOIS Lookup. However, if the owner provided false information during the registration, it might be impossible to locate the person. 

Even when you legally own a trademark, a cybersquatter, i.e. someone who registers, traffics, or uses a domain name with the intent to sell it for profit, could try to sell it back to you as the rightful trademark owner. In this case, if you believe that someone has taken a domain in bad faith, it may still be possible to acquire your domain name.

Twenty years ago ICANN, together with the World Intellectual Property Organization (WIPO), developed the most often-used RPM, the Uniform Domain Name Dispute Resolution Policy (UDRP). It acts as a streamlined arbitration procedure that operates in new gTLDs, like .APP or .BEST as well as legacy domains, like .COM or .ORG. Instead of relying upon laws, like the trademark statutes, trademark owners can fall back to the UDRP for help. It is a relatively cost-effective and very efficient trademark protection, which generally does not take longer than 45 days from commencement to resolution. If the adjudicated claim was successful, the lawful trademark owner has the right to have the abusively registered domain name deleted, but they can also have the domain transferred to themselves if they want to use it. It helps to prevent abusive registrations in the first instance by the registry’s operating rules and procedures. To this day, trademark owners have used the policy to resolve over 60,000 disputes.

Most new gTLDs are sold without restrictions, which creates challenges for trademark protection because registrants could technically register trademark-corresponding domain names in bad faith. On the other hand, there are specialized domains like .BANK, .AERO, or .LAW and its Spanish counterpart .ABOGADO that are restricted to a specific industry and require proof of validity for a successful registration. For example, in the .LAW new gTLD, registrations are limited to qualifying companies in the legal services industry and come with specific eligibility requirements. The verification process required to register a domain like that differentiates the owner from the competition and resonates with users who value security. Within this particular domain, over 12,000 qualified entities have registered their domain name, and many of them host their primary website on the .LAW extension.