Wake Up and Smell the Sunrise: The New TLD Era Has Arrived
As we previously reported to you (click here to view the article), the internet is expanding to include hundreds of new top-level-domains (TLDs) (examples of TLDs as we know them today include .com, .net. and .org – i.e., the term that is to the right of the "dot"). While the only certainty at that time was that the launch was inevitable, like it or not, it's finally here.
Over 1,900 applications were received by ICANN (the internet's governing body) from entities who want to run their own TLD registry. To date, 222 Registry Agreements have been signed and nearly 80 TLDs have been added to the "root zone", a key step before a registry is launched to the world for domain name registration. Thus, the mandatory sunrise periods for a number of TLDs have now opened. What does this mean for you and your business? Well, it's time to take action before it becomes too late.
The good news is that trademark owners are still able to take advantage of a central repository system, known as the Trademark Clearinghouse. The Trademark Clearinghouse is a mandatory inclusion in the pre-launch process of any new generic TLD (i.e., the sunrise periods listed above), as well as mandatory checkpoint once new domain names are registered. While this is certainly good news, the downside for our U.S. clients is that only those marks that have been federally registered will be eligible for deposit within the Trademark Clearinghouse – not common law marks; not state registrations; and not domain names. To recap, the benefit of the Trademark Clearinghouse for federal trademark owners is three-fold:
1. Sunrise Service
In order to participate in the sunrise period of any new TLD on the basis of prior trademark rights, a trademark owner must have its trademark registration deposited with, and validated by, the Trademark Clearinghouse. This means that for any generic TLD that is attractive to a trademark owner's business, trade, or industry (e.g., .food for our clients in the food and restaurant industry or clothing for our clients in the apparel industry), taking advantage of the Trademark Clearinghouse will allow you to seek the domain name identical to your registered trademark (yourmark.TLD). The TLDs that are now in their respective sunrise periods are listed below.
2. Trademark Claims Services
After the sunrise period closes and the new TLD becomes available to the public for domain name registration, each new TLD registry will be required to check new domain name registrations against the trademark registrations that have been deposited with the Trademark Clearinghouse for a period of 90 days. As such, if another entity or individual seeks a domain name registration that is identical to the trademark deposited with the Trademark Clearinghouse (e.g, yourmark.app), you will receive notice of that domain name registration and take appropriate action if warranted.
3. Uniform Rapid Suspension (URS)
Registration with the Trademark Clearinghouse can be used to support URS claims. The URS will be a counterpart to the Uniform Domain-Name Dispute-Resolution Policy ("UDRP") and is designed to handle the "clear cut" cases of cybersquatting and infringement. It is also purported to be a faster and less expensive version of the UDRP. However, URS claims will only be available to trademark owners who have had their rights "validated." As such, the registration process with the Trademark Clearinghouse will have satisfied this validation step.
The following TLDs are now in their respective sunrise periods:
Sunrise periods for the following TLDs have opened and are scheduled to close on January 25, 2014:
Sunrise periods for the following TLDs have opened and are scheduled to close on February 1, 2014:
Sunrise periods for the following TLDs have opened and are scheduled to close on February 7, 2014:
Sunrise periods for the following TLDs have opened and are scheduled to close on February 8, 2014:
Sunrise periods for the following TLDs have opened and are scheduled to close on February 9, 2014:
Sunrise periods for the following TLDs have opened and are scheduled to close on February 14, 2014:
.みんな (Japanese for "everyone")
Sunrise periods for the following TLDs have opened and are scheduled to close on February 15, 2014:
Sunrise periods for the following TLDs have opened and are scheduled to close on February 22, 2014:
Sunrise periods for the following TLDs have opened and are scheduled to close on March 1, 2014:
Sunrise periods for the following TLDs have opened and are scheduled to close on March 8, 2014:
The following TLDs are awaiting launch of their respective sunrise periods:
If any of these TLDs raised your eyebrows or appear to be in line with your business, then we suggest you undergo an evalutation of your trademark portfolio to determine what trademark registrations you should be depositing with the Trademark Clearinghouse before their respective sunrise periods close. Frost Brown Todd stands ready to assist you with this entire process as Frost Brown Todd is an official Trademark Agent with the Trademark Clearinghouse, which allows us to deposit trademark registrations on behalf of our clients and other federal trademark registration holders. We have already handled such deposits for many of our clients and stand ready to assist others with this process. We are also available to discuss appropriate strategies for more complex trademark portfolios and advise as to alternative options that may be available for those brand owners who do not hold federal registrations for marks of concern.
Lastly, it should be noted that this is not a complete list of the new TLDs as more and more TLDs will be delegated and launched throughout 2014. We will continue to update you as additional TLDs are delegated and their respective sunrise periods announced.