Act now to protect your trademarks against potential infringements in the explosion of new generic domain names

ICANN has received over 1,900 applications under its new generic top-level domains (“gTLDs“) programme for new generic domain names in Chinese, Arabic, Cyrillic or Latin characters. The applications cover many generic names including “.buy”, “.sale”, “.trading”, “.shop”, “.deal”, “.fashion”, “.music”, “.movie, “.luxury”, “.jewelry”, “.book”, “.購物”, “.商店”, “.娛樂”, “.手錶”, “.珠寶”, “.網站”, “.網店”, etc. All the applications are currently undergoing initial evaluations. It is estimated that the first round of approval for the applications will be released near the end of April 2013 and the first new gTLD will go live in the domain name space some time in May 2013.

With the imminent roll out of the new gTLDs, it is important for you to take this opportunity to protect your trademarks with the Trademark Clearinghouse (“TMCH”) which is an important rights protection mechanism built into ICANN’s new gTLD programme. There are currently roughly two dozen or so domain names extensions, the more familiar ones being “.com”, “.net”, “.org”, or “.biz”. With the imminent roll out of new gTLDs, there will be hundreds or thousands of new domain name extensions. With so many more choices available in the domain name system, this provides many more opportunities for infringers to infringe on your trademark rights. In the future, infringers may not only register domain names to infringe your marks under familiar extensions by using your mark at the second level such as “[YOUR TRADEMARK].com / .net / .org / .biz”, but may also register domain names to infringe your marks under the thousands of new extensions such as “[YOUR TRADEMARK].buy”, “[YOUR TRADEMARK].deal”, “[YOUR TRADEMARK].shop”, “[YOUR TRADEMARK].luxury”, “[YOUR TRADEMARK].購物”, “[YOUR TRADEMARK].商店”, etc. It is therefore important that you act now to strengthen the protection of your trademarks before the new gTLDs are introduced into the domain name system.

From 26 March 2013, brand owners are able to submit their trademark data to the TMCH. The data will be recorded in one centralised database and the TMCH offers various services designed to help trademark owners protect their registered trademarks while the new gTLDs are introduced into the domain name system.

The TMCH currently offers one-year, three-year and five-year plans for registering trademarks on their database. The fees are relatively low – for each trademark registration with the TMCH, the TMCH’s basic fees structure is currently US$150 for the one-year plan, US$435 for the three-year plan, and US$725 for the five-year plan. Discounts are provided by the TMCH for higher volumes of trademark registrations. Under these plans, two types of services are offered to trademark owners:

1. Sunrise service – the TMCH issues notifications to trademark owners registered on their database whenever a Sunrise period of a new gTLD is scheduled, so as to provide eligible trademark owners with the opportunity to register second-level domain names using their trademarks, in advance of the general public during the Sunrise registration period in the launch of a gTLD; and/or
2. Trademark claims service – this watch service issues real-time notifications to alert trademark owners when a registrant registers a domain name which matches the trademark owner’s trademarks recorded in TMCH’s database. This service does not prevent registration of the domain name in question, but alerts the trademark owner to enable it to take the necessary actions against the domain name.

Registered word marks from any jurisdiction are eligible for registration with the TMCH. Trademark applications and any registered mark that was subject to a successful invalidation/cancellation/rectification/revocation action will not be accepted by the TMCH. Any mark that contains a dot (i.e. “.”) will not be accepted by the TMCH.

Registering trademarks with the TMCH’s centralized global database minimizes your time, costs and administrative burden as new gTLD registers will have access to the TMCH’s database and you only have to validate your trademarks once with the TMCH, rather than separately with each registry for each new gTLD. You can take advantage of the TMCH’s services for protection of your trademarks in the domain name space at relatively low cost compared to the cost of taking action to cancel registrations after the fact.

In view of the minimal costs involved in registering your trademarks with the TMCH, and the potential time and costs savings that you will benefit from if you take advantage of the TMCH regime in protecting your trademarks, we strongly recommend all our clients to act now. If you would like our assistance in registering your trademarks with the TMCH, or if you have any questions regarding protection of your trademark rights in the domain name space or any other domain name matters, please do not hesitate to contact our Head of Commercial IP, Entertainment & Media Group, Charmaine Koo, at telephone: +852 2825 9300 or email: charmaine.koo@deacons.com.

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