The avalanche of approximately 1400 new
generic top-level domain name extensions
will soon be upon us, possibly including
many in the pharma space such as
brand-centric .abbott, .merck, and .pfizer
and disease-centric .hiv. There are even
some disease-centric top level domains
that are proposed to be closed to out-
siders such as .cancerresearch and .stroke,
though the fate of all such "closed
generic" top level domains is in limbo.
The first new gTLDs to be delegated will
be the 100 or so "internationalized"
gTLDs (those in non-Latin scripts such as
Chinese, Arabic or Cyrillic). Once the
process gets rolling, ICANN believes it
can delegate as many as 20 new gTLDs
per week.
To help brand owners protect their
marks, a new Trade mark Clearinghouse
has been established, jointly run by
Deloitte and IBM. A trade mark owner
may record in the Clearinghouse marks
that are (1) registered at the national or
multi-national level (such as for
Community Trade marks, but excluding
US state registrations), (2) court-validated
common law marks, and (3) protected by
statute or treaty, which are likely rare in
the pharma industry.
What Are the Benefits?
The new gTLD system incorporates
several rights protection mechanisms that
directly rely on information in the
Clearinghouse.
· "Sunrise" Domain Name
Registrations
For at least 30 days before domain names
in a new gTLD become generally available,
the registry must first offer a Sunrise
registration period for "identical matches"
of trade marks that are recorded in the
Clearinghouse that meet the eligibility
requirements for the new gTLD. The
"identical match" rules are quite strict.
When relying on a trade mark registration
to support a Sunrise application, the
Clearinghouse must first verify the mark is
in use. In addition, though changes are
still possible, under the current version of
ICANN's Applicant Guidebook the trade
mark application must have been filed
before 13 June 2012 (the date ICANN
revealed the new gTLD applications), and
the trade mark registration issued on or
before the date of the registry agreement
for the particular new gTLD of interest. If
multiple mark owners file for the same
domain name during the Sunrise period,
the rules adopted by the registry of the
new gTLD apply (often involving an auc-
tion, with the proceeds -- surprise! --
going to the registry).
· Notice of Claims Service
After the Sunrise period, domain names
will become generally available (subject to
the registry's eligibility requirements). For
a minimum of the first 90 days after
general launch, domain name applicants
will receive a notice if their requested
domain name is an identical match to a
trade mark recorded in the
Clearinghouse. If the applicant proceeds
to register the domain name, the trade
mark owner will receive notice that the
domain name has been registered. It is
then up to the mark owner to take
whatever action it deems appropriate, if
any.
· Beware the Hype
There have been exaggerated claims of
other purported benefits of recording a
trade mark in the Clearinghouse.
In reality:
· Recording a mark in the Clearinghouse
does not avoid the chance of infringement
it merely provides notice to the domain
name applicant of an identical match to a
mark recorded in the Clearinghouse and
then provides notice to the mark owner if
the domain name is registered anyway. It
is up to the mark owner to take any
appropriate action.
· Recording a mark in the Clearinghouse
is not a requirement to use the tried-and-
true Uniform Dispute Resolution
Procedure.
· Recording a mark in the Clearinghouse
is not a requirement to use the new
Uniform Rapid Suspension service, though
the complainant's mark must be of the
type that is eligible for inclusion in the
Clearinghouse.
· If identical trade marks are recorded in
the Clearinghouse by different parties, it is
not the case that an auction or lottery will
automatically result rather, it is up to
the individual registry of each new gTLD
to decide how to resolve conflicts during
Sunrise.
What Is A Trade Mark Owner To Do?
Trade mark owners should review the list
of applied-for new gTLDs and decide if
they want a second-level domain name
that is an identical match to an existing
trade mark registration. By drilling down
into the new gTLD application, particularly
the answers to Questions 18 and 29, you
can determine the eligibility requirements
and procedures for resolving disputes in
case there are multiple qualified
applications for the same domain name
during Sunrise.
After four months or so of being
operational, only about 7,000 trade marks
were recorded in the Trade mark
Clearinghouse, and reportedly less than
1% of these related to the
pharmaceutical/medical industry. This
cautious wait-and-see approach may be
prudent, but waiting too long risks delays
and being excluded from Sunrise
registration periods for new gTLDs.
While each new gTLD registry must give a
30 day notice prior to the launch of
Sunrise registrations, there is no
guarantee that recordation can be
accomplished in this time frame
especially with so many trade mark
owners evidently sitting on the sidelines
who may now all rush at once to record
their marks.
Thus, one option is to record your marks
early, even if you do not know for certain
a new gTLD of interest will in fact be
delegated. If you wish to be more
involved in the process and only record
marks after having greater confidence that
a new gTLD of interest will actually be
delegated, you can monitor the signing of
individual registry agreements at ICANN's
website at
http://www.icann.org/en/about/agree-
ments/registries. Though signing a registry
agreement is not an assurance that the
new gTLD will be delegated, it is a very
good indicator.
If a mark owner does not want a Sunrise
registration but does want to monitor for
potential conflicting domain names of
others, a private domain name watch
service should be considered rather than
relying on the Clearinghouse. Private
watch services will not be limited by the
narrow identical match rules and will last
longer than 90 days. It is also notable that
the decision not to submit a mark in the
Clearinghouse cannot be used against a
trademark owner in any enforcement
action. As stated in the Applicant
Guidebook:
· Inclusion in the Clearinghouse is not
proof of any right, nor does it create any
legal rights. Failure to submit trade marks
into the Clearinghouse should not be
perceived to be lack of vigilance by trade
mark holders or a waiver of any rights,
nor can any negative inference be drawn
from such failure.
While recordation in the Clearinghouse is
a requirement for a Sunrise domain name
registration, mark owners should carefully
consider if the other benefit of
recordation -- providing notice only for
identical matches and for only as few as
90 days after general launch -- is worth
the cost when compared to other
monitoring options that go far beyond
identical matches and last far beyond 90
days.
The Trade mark Clearinghouse for New gTLDs:
Beware the Hype
Keith Barritt, Fish & Richardson P.C., USA
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