Trademark Owners: Nine Steps to Prepare to Defend Your Brands on the New Internet

March 28, 2012

It is now only a few weeks before the Internet Corporation for Assigned Names and Numbers (ICANN) closes the first round of applications for new generic top level domain names (gTLDs) (the characters to the right of the dot) on April 12, 2012. Trademark owners, whether they are participating in the new gTLD application process or have decided not to participate in this round of applications, should begin taking steps to protect their trademarks against the registration and use of confusingly similar domain names in the first (gTLD)(.BRAND) and second (SLD) (the characters to the right of the dot)(BRAND.TLD) domain name levels of the new gTLDs.

ICANN’s new gTLD program incorporates several rights protection mechanisms trademark owners should be aware of. Trademark owners can use Formal Objections to protect marks against identical and confusingly similar domain names: string confusion objections between applied-for TLDs and legal rights objections by trademark owners against confusingly similar TLDs. In addition, community and limited rights objections are available to challenge TLDs which infringe a term used by a particular community or violate public taste or moral standards. There is also a procedure for challenging registrars that engage in a pattern of domain name abuse for the first level. In regard to second level domain names, the new gTLD program will establish a trademark clearinghouse through which owners of registered trademark can participate in sunrise registration periods and a notification-based trademark claims service. Finally, in addition to the existing uniform dispute resolution policy (UDRP) challenge of domain names registered and used in bad faith, the program establishes an expedited uniform rapid suspension (URS) challenge procedure. However, before the list of applied for domain names is posted in early May, trademark owners should consider taking the following steps in order to utilize these mechanisms and protect and enforce their brands in the new domain name space.

  1. Register your trademark. Although trademark users in the U.S. establish rights here either through registration or use, registration is more important now than ever. In order to be recorded with the Trademark Clearinghouse, a trademark must be registered in a national trademark registry. Legal or UDRP challenges also require or are substantially aided by registration. In addition, it is far easier and less expensive to challenge domain name infringement, cybersquatting, and trafficking in counterfeit goods if the trademark upon which a company bases its rights is registered. In many countries, especially the United States, registration also provides important evidentiary benefits such as presumptions of ownership, validity, and notice.
  2. Establish use of your trademark. Although most countries register trademarks without requiring proof that the marks are being used, in order to participate in Sunrise registration programs, a trademark must be used and evidence of use – a specimen and declaration of use – must be filed with the Trademark Clearinghouse (TMCH). Although the procedures for registering trademarks in the TMCH will not be established until a service provider is under contract with to administer the validation and database functions of the TMCH, companies should gather specimens and evidence of use now, using the requirements of the U.S. Patent and Trademark Office, which applies the strictest use tests, to gather and prepare use evidence and contacts.
  3. Establish internet and domain name use committees within industry and professional organizations. One of the most important opportunities of the new gTLD program is the ability to register generic or descriptive terms as TLDs. Many generic terms, however, may have a particular significance to, or affect the rights of groups of companies or individuals. The new gTLD program gives priority to the rights of communities (defined by ICANN as any clearly defined group of people or organizations) in established terms, both in the registration and challenge stages. Companies operating in particular industries should therefore consider organizing committees within their industry organizations or associations to monitor and assert rights in community terms in order to claim the community benefits and prevent the registration of TLDs which could adversely impact their entire industry and consumers’ ability to locate and trust searches for members’ services in their community.
  4. Monitor the announcement of first level TLDs. On about May 1, ICANN will publish a complete list of TLDs for which applications have been filed. Trademark owners, communities of interest and others whose rights would be violated by registration of a domain name will have 7 months from the date of publication to file objections to registration of the domain name. Objections can be based on string confusion (if the objector has also applied for a new TLD); legal rights (if the domain name violates any rights of the objector, including dilution, trademark infringement, slander, etc.); limited community interest (if the domain name violates community standards of decency or interest); or community rights violations (if the domain would adversely affect an established community’s rights). At this time, there is no official word on the number of applications being filed. As of March 19, however, 290 applications to apply for registration have been filed via the TLD Application System (TAS) system, each of which is good for up to 50 completed applications. Thus, between 290 and 14,500 applications may be filed at this time, and authorities predict that most companies applying for .BRAND domains have yet to file their applications.
  5. Subscribe to domain name registration monitoring and watch services for second level domains. With the opening of the between 300 and several thousands of new top level domain registries which are being applied for -- each of which can establish or permit registration of second level domain names -- the task of monitoring all of these registries for identical and confusingly similar strings is beyond the means or abilities of even the largest companies. A number of reputable, experienced domain name monitoring services presently exist for the legacy TLDs (.com, .net, etc.), and most of these will be offering monitoring and watch services in the new gTLDs. Although these companies will not be setting their rates for universal monitoring until after the number of new gTLDs is known, companies should begin now to select a service provider they can work with. Attorneys and law firms that have experience working with clients in the domain name space can provide useful insight and advice, and many have established working relationships that your company can benefit from.
  6. Retain or establish a protection plan with experienced trademark and internet counsel. Although the list of applied for gTLDs will be published and should be searchable for specific strings, and watch reports can be sent directly to companies, because companies should be concerned not only about registration of exact strings, but confusingly similar strings, they should retain counsel with experience in analyzing strings and trademarks for likelihood of confusion and other possible claims. Firms should also have experience in challenging infringing domain names, negotiating for domain name purchases, and prosecuting UDRP, ACPA, and trademark infringement claims.
  7. Know the new gTLD timeline. Companies need to keep abreast of the schedules being followed in the roll-out of new gTLDs so they can act within the scheduled times. (See "Application Status and New Timeline for ICANN’s Top Level Domain Roll-Out")
  8. Establish an Online Presence Policy Team. The internet with its marketing and informational potential, and the potential for abuse, is here to stay. Companies should establish Online Presence Teams in order to review or develop their policies regarding websites, online marketing, e-mail and social network use, trademark and content policing and protection, and domain name registration. You wouldn’t introduce a new product line without reviewing it with product development, marketing, finance, legal, and Board level review and planning. Companies should view their use of the internet and domain names with the same comprehensive planning and policy development, and then retain the employees, legal counsel, and service providers to assist them in carrying out these policies.

Finally, the internet and domain name space should not be viewed as merely a utility through which to pipe marketing and sales information. It is, more so every day, an increasingly important marketplace of products, innovation, and communication, and the primary conduit for transmitting and locating information, marketing and selling products and information, and developing new goods and services. ICANN’s role, and the effects of its policies and procedures will therefore increase dramatically over the next few years. Therefore, 9. keep abreast of developments in ICANN’s new gTLD program. ICANN is a unique internet governance organization in that it is a non-profit corporation which embodies a bottom-up multi-stakeholder model of policy making. The issues considered by and constituencies which make up ICANN are complex, and the decisions are far-reaching. Registry operators, registrars, intellectual property owners, non-profit corporations, internet users, and a government advisory council are all governing members of ICANN and, through it, the domain name space. While these constituencies have different, and often competing, concerns with the internet and domain name issues, working within a consensus model and under the review of ICANN’s Board and the GAC, ICANN strives to address and incorporate as many of these as possible and as can coexist. However, most decisions and policies are necessarily compromises which may favor one or another interest group. Companies with a financial and business stake in the business of the internet should be members and participate, however, all companies which utilize the internet, own trademarks or trade names, or own or develop content which may be marketed, distributed, or accessed on the internet should retain counsel and identify employees to keep current with domain name, security, and resource issues affecting the internet because these will directly or indirectly affect their business for years to come.

Marshall, Gerstein & Borun LLP can assist you with your online legal needs. We have more than 20 years of experience assisting clients with internet and computer system copyright, trademark, patent and domain name issues. We work with clients to monitor and challenge third party domain names and infringing online trademark use, prepare and file successful UDRP claims and trademark infringement and cybersquatting claims in the federal courts, and formulate online presence plans, policies and teams. We were among the first firms to assist in domain name transfer matters, and have extensive licensing experience and expertise.

Marshall, Gerstein & Borun is also a member of the International Trademark Association and participates in ICANN’s Intellectual Property Constituency, and our attorneys participate in both ICANN and intellectual property organizations’ internet and domain name committees to understand, represent clients’ interests, and assist in the development of policies to protect the rights and interests of our clients and the intellectual property community. We are ready, able, and eager to assist clients in both the brick and mortar world and in the fast-changing world of the internet, domain names, online protection, and social media. For more information, to speak with one of our attorneys, or to arrange a free consultation, contact a member of the Trademark Practice Group.

This alert is intended to be informative and should not be interpreted as legal counsel for any specific fact situation. The information contained herein is for informational purposes only and is not legal advice or a substitute for legal counsel. Readers should not act upon the information presented without consulting professional legal counsel. Pursuant to applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2012 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.