Legal Alerts / 5 Mar 2013

Legal Alert – New Challenges for Trademark Owners in the World of Domain Names

The expansion of the generic top-level (gTLD) domain space will impose new challenges for trademark owners. In the near future we may be using domains like .apple, .nokia, .music, in addition to today’s generic domain root names (.com, .org, etc.) which may result to increased amount of domain name hijacking situations and disputes.

To mitigate the risks that the new gTLD program may pose to trademark owners, The Internet Corporation for Assigned Names and Numbers (ICANN) has created the so called Trademark Clearinghouse, which is a component part of the new gTLDs program. Trademark owner may register their trademarks at the Trademark Clearing house in order to manage the risks related to the new gTLD’s more efficiently and easily. ICANN has announced that the Trademark Clearinghouse will open on 26 March 2013 for trademark submissions.

Benefits of registering a trademark with the trademark Clearinghouse include the opportunity to participate in a set of services designed to help protect trademark owner’s rights. After the trademarks have been submitted and validated, the rights can be used to register the corresponding domain name in any new gTLD in advance of the general public (“sunrise period”). During Sunrise period and Claims periods, which shall last 60 days after the mandatory Sunrise Period has expired, the Trademark Clearinghouse will alert right holders when a domain name similar with the right owner’s trademark is registered.

The decision to radically expand the number of types of domain names is a development that is relevant for all trademark owners. Trademark owners should begin to strategize on how best to protect their trademark portfolio given the expansion of gTLDs. Trademark holders should also decide which of their trademarks should be registered with the Trademark Clearinghouse in order to take advantage of the benefits of the registration mentioned above.

Attorneys at Law Borenius Ltd, as a full service trademark law firm, is prepared to assist trademark owners in every step of the way. For further information on protecting your trademark rights during the DNS expansion, please contact:

Lasse Laaksonen
Marianne Hollands

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