2013 will see the launch of a ton of new top-level domains – perhaps as many as two thousand new generic top-level domains (gTLDs). This is sending ripples through a good many companies because they already have web addresses that are familiar to their clientele and don’t see the need for further domain names. These days, companies prefer to concentrate on directing web traffic to a main website by marketing and technical means, as opposed to drumming up traffic with a multitude of domain names.
There are risks to this anticipated explosion in gTLDs. We noted for instance in connection with previous launches of new top-level domains that certain elements would capitalise on this to turn a ruthless buck. The sheer volume of new top-level domains will also be a headache in terms of manageability and control. In order to intervene on any trademark abuses, the entity responsible for all top-level domains, ICANN, has set up Trademark Clearinghouse to serve as a centralised trademark repository for the new gTLDs. Trademark Clearinghouse is expected to go live at some time in 2013 when the first new top-level domains are launched. The finalised rules to be applied by Trademark Clearinghouse are likely to be presented in spring 2013.
The aims for Trademark Clearinghouse will be twofold:
1) Trademark surveillance for a limited period of time
2) Priority access to register a domain name based on a previously registered word trademark
Access to using Trademark Clearinghouse will require the user to hold a registered word trademark or to have acquired word trademark protection by common-law use. Documentation to prove that such protection is enjoyed will be required.
We know how important it is to protect trademarks via the various electronic services that are available. Aside from surveillance in the trademark register, there is the option of running surveillance on domain name registrations. These forms of surveillance permit measures to be taken to prevent infringement at an early stage. There are currently simplified dispute resolution procedures for domain names that can be used in the first instance to reclaim or deregister a domain name.
Awapatent’s trademark attorneys have experience acting as legal counsels in domain name disputes in courts and can assist in alternative dispute resolution procedures. We can also assist clients seeking to register word marks at the Trademark Clearing House and produce the evidence required for registration.
Ann-Charlotte Järvinen, Attorney at Law, European Trademark Attorney