The internet is about to have millions of new addresses, significantly increasing the possibility of cybersquatting.  The Internet Corporation for Assigned Names and Numbers (“ICANN”), the organization essentially responsible for policing the internet’s domain name system, is in the process of launching a series of new domain extensions.  While a handful of domain extensions have been around for years (.com, .net, .biz), starting in 2014 new extensions are being launched by ICANN.  The first extensions to go live included .guru, .estate, and .equipment.  New extensions are scheduled to roll out through 2015.

While your company may have registered its domain name years ago, there is now the possibility that someone could register a similar domain name with one of these new domain name extensions.  This act of registering a domain name with the intent to profit from the goodwill of a trademark belonging to another is known as cybersquatting.  Anticipating the possibility of increased cybersquatting due to  new domain name extensions, ICANN has created the Trademark Clearinghouse to provide a process to protect trademark owner’s rights. By registering with the Trademark Clearinghouse for an annual fee a trademark owner will be able to participate in a “sunrise period” allowing a trademark owner to preregister extensions that correspond to their registered trademarks before the public release of the new domain name extensions.

In order to register, a trademark owner must submit proof of their registered trademark to the Trademark Clearinghouse.  After the rights are verified, the trademark owner will then be eligible to preregister domain extensions.

As an added service, the Trademark Clearinghouse will give notice to the trademark owner during public registration that someone is attempting to register one of the new domain names.  While the Trademark Clearinghouse will not block the public registration, it will provide the public registrant notice that the registration may violate the trademark owner’s rights.

In addition, ICANN has also implemented a new Uniform Rapid Suspension (“URS”) system to allow trademark owners to contest registration and use of domain names that are confusingly similar or identical to registered trademarks in an expedited process.  The URS proceedings are adjudicated by an authorized dispute resolution provider and will result in the domain name’s suspension or termination. The new URS system joins a number of other legal options that can be pursued against cybersquatters, each with with varying types of relief.

These new domain name extensions provide creative ways for businesses to reach their customers and clients. By taking a few preventative steps you can continue to reach your market while defending against potential cybersquatters. 

Article brought to you:
Elizabeth Burgin Waller
Principal
Intellectual Property, Medical Malpractice, Litigation and Dispute Resolution Practice Groups