Protecting Corresponding Domain Names to Trademarks When ICANN Expands Space for new gTLDs

ICANN has recently approved several rights protection mechanisms to counter cybersquatting for new gTLDs, including the Trademark Clearing House program (TMCH) which allows brand owners to submit their trademark details for entry into a centralized database and enable the rights holder, after verification, to participate in the sunrise program and Trademark Claims service across all eligible new gTLDs. The TMCH is described in a circular dated January 11, 2012. Sunrise rights refer to a stipulated period during which an owner of a registered trademark may register domain names in new generic Top Level Domains (gTLDs) prior to the registrar accepting registrations from the general public. Not all owners or trademark counsel are acquainted with the procedure to protect the corresponding domain name for new gTLDs.

The pressure to understand the procedures will become more pressing starting in the fourth quarter of 2013 when ICANN expands the familiar gTLDs to include a variety of new extensions such as .book, .traffic, .car, .bank, etc. (categories of goods and services). The expansion opens up a Pandora’s Box for established brands. Heretofore, registration agreements for new gTLDS provided a mechanism for trademark owners to challenge registrations during the sunrise period, and there is no reason to expect this to change, but waiting in ignorance of the procedures will create later uncertainty.

The TMCH will accept

3.2 The standards for inclusion in the Clearinghouse are:

3.2.1 Nationally or regionally registered word marks from all jurisdictions.
3.2.2 Any word mark that has been validated through a court of law or other judicial proceeding.
3.2.3 Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion.
3.2.4 Other marks that constitute intellectual property.

As with the UDRP, “Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.”  Corresponding domain names refers to the Second Level Domain. Registration extends only to claimants who as complainants would have standing in maintain a proceeding.

The question is, If the trademark owner fails to challenge a registration during the sunrise period does it lose the right to have the disputed domain name cancelled or transferred after the window has closed? The emerging consensus is that it does not. The issue has been squarely raised in a number of .mobi [C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds, D2008-1528 (WIPO December 4, 2008); Adidas AG v. Zhifang Wu, D2007-0032 (WIPO March 21, 2007); and Mansueto Ventures, LLC v. Jonathan Witte, D2006-1479 (WIPO January 19, 2007).] and .xxx TLD decisions [Richard Branson v. Sean Truman, FA1201001423689 (Nat. Arb. Forum February 14, 2012); HEB Grocery Company, L.P. v. Eric Gonzales, FA111200 1421851 (Nat. Arb. Forum February 7, 2012)] and in court actions, although I am not aware of any in the United States [Coca-Cola failed to register its mark within the sunrise period in Albania and commenced an action in the Tirana District Court which rejected Coca-Cola's claim. On appeal to the Tirana Court of Appeal, judgment reversed and ordered cancellation of (November 2011). The Court held that a trademark owner does not lose its right to a corresponding domain name for failing to register the domain name within the Sunrise period. As reported by Gjergji Gjika, Drakopoulos Law Firm an appeal to the Supreme Court of Albania is pending].

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