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by Michael Kelly
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
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.
© 2004-2013 Kenyon & Kenyon
LLP. All rights reserved.
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