Kenyon and Kenyon LLP: New gTLD Trademark Clearinghouse Opening March 26, 2013

by Michael Kelly and Michelle Mancino Marsh

The new generic Top-Level Domain ("gTLD") program will soon be bringing a flood of diversity to the internet's domain name system. Over 1,900 new gTLD applications have been submitted for gTLDs such as ".apple," ".shoes," or ".llc," and the Internet Corporation for Assigned Names and Numbers ("ICANN"), the organization that devised the program, expects technical testing for the new domains to begin in April 2013. While some applicants intend to use their new gTLDs solely for themselves, others intend to sell secondary domains to the public.

The potential for cybersquatting raises legitimate concern among rights-holders, as opportunists may attempt to register a mark as a secondary domain (e.g., nike.shoes or nike.sneakers registered to someone other than Nike). Accordingly, ICANN is establishing several new procedures to address these concerns.

Central to ICANN's plan is the Trademark Clearinghouse, a centralized database of U.S. and foreign trademarks to facilitate dispute resolution in the new gTLD program. Trademark owners that submit their marks for inclusion in the Clearinghouse will receive automatic alerts when a secondary domain name matching their trademark is registered (akin to a trademark register watch notice). In addition, individuals registering a secondary domain name will receive official warnings if the domain name matches a trademark in the Clearinghouse, putting them on notice of the mark.

The Clearinghouse is also an important element in ICANN's two new dispute resolution procedures: the Uniform Rapid Suspension system ("URS") and the Post Delegation Dispute Resolution Procedure ("PDDRP"). URS is intended to be a less expensive, quicker procedure for removing infringing domain names than the already existing UDRP process. If a rights-holder registers their trademark with the Clearinghouse, they do not need to provide evidence of use of the mark when filing a URS complaint. Similar advantages apply to PDDRP complaints.

Registration for the Clearinghouse opens March 26, 2013. For the first 30 days, the "sunrise period," trademark holders will be able to register with the Trademark Clearinghouse before secondary domains may be offered to the general public. Deloitte Development LLC has been appointed the sole validator for trademark submissions and trademark holders only need to submit their marks to Deloitte's portal once rather than apply and pay fees to each gTLD. The fee charged by the Clearinghouse for registering starts at $150 per trademark per year.

Kenyon & Kenyon LLP's team of experienced attorneys is ready to review your trademark portfolio and assist with any submissions to the Clearinghouse, or answer any other questions regarding the new gTLD program.

About Kenyon & Kenyon LLP

Kenyon & Kenyon is consistently ranked by peers and in-house counsel as one of the top firms for intellectual property law. Since its founding in 1879, the firm has provided its worldwide clientele with litigation, prosecution, licensing and counseling services. Large and small enterprises and individuals choose Kenyon to design and implement intellectual property strategies when it matters most. The firm has offices in New York, Washington, DC, and Silicon Valley.

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