Ahead of the new entry of the new generic Top-Level Domains (gTLDs), established entities will be given the possibility of securing domain names corresponding to their trademarks before the general public is able to do so. As adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), "sunrise periods" must be available for 30 days. It is estimated that the new domain names shall be accessible to the general public by Q2 of 2013.
Pre-registration will only be possible for trademarks validated with the Trademark Clearing House (TMCH), which is a global repository for verified nationally or regionally registered trademarks, court-validated marks and marks protected by statute or treaty. Upon request of gTLD registries, other types of marks may be verified through the TMCH.
Verifications through TMCH shall be available from 26th March.
The pre-registration period, known also as the Sunrise Period, follows the program launched in 2012 by ICANN for the introduction of new generic top-level domains. This program gave business the possibility of applying for the use of almost any word in any language as a generic top-level domain suffix (a gTLD) instead of the standard .com and .co.uk and similar gTLDs.
While the expansion in gTLDs offers the possibility of establishing domains with distinct identity for legal entities and individuals alike, such expansion presents also a greater risk of registration abuse. To mitigate this, TMCH shall also be offering the Trademark Claims service. This service, which follows the Sunrise period shall serve to warn both trademark owners and domain name registrants of possible trademark violations. During this period will be available only for 60 days, the TMCH will notify right holders if any third parties attempt to register a domain name matching a mark that is recorded in its system.
Since the TMCH is only a central repository of authenticated trademark data, trademark or brand owners wishing to block gLTDs from being registered will need to file a separate action in order to block every domain they want to take off the market. Therefore post-notification by the TMCH, it is up to the trademark owner to determine whether to take action or not.
As Sunrise Periods and Trademark Claims services are limited to exact matches of a domain name to a word mark, registration abuse is not completely eliminated and the risk of cybersquatting, front-running, consumer deception and false suggestions of affiliations remains. As a result, it is essential that brand owners undergo a brand protection strategy that ensures that potential or actual infringers do not register domain names that are either the same as or confusingly similar to their own protected brand.
