Cybersquatting & Domain Dispute Attorneys / Lawyers

New gTLD Domain Name Suspended by URS

With the offering of new generic top-level domains (gTLD), consumers, domainers and companies can find, purchase and create domain sites that better represent who they are to the right of the dot.  However, this can also create problems for those with already established trademarks and domain names.  

For example, it was recently decided by the Uniform Rapid Suspension System (URS) that a gTLD domain name be suspended because the Complainant met, by clear and convincing evidence, all three elements of the URS requirements:

gTLD Domains at Top Auction Prices

There was a massive expansion of new general top-level domain names (gTLDs) at the end of 2013.  Having a more descriptive word to the right of the dot will give consumers, domainers and business owners the opportunity to expand their online presence with a domain name that will better represent who they are or more closely fit to what type of business they have.    However, the domain auction companies that purchased these gTLDs did so with a high price tag.  For example, the gTLD extension of .garden and .yoga  sold together for the price tag of almost $6 million dollars.  

So what does this mean for those looking to purchase at the next release of gTLDs? It could mean that domain auction companies or any other businesses looking to purchase gTLD extensions as they are rolled-out is going to have to dig deeper than just in their pocket change purse.  Consumers are learning the importance of a good domain name to have in order to get very high online recognition, so domain auction houses and big businesses definitely know the value of applying for and paying big bucks for the best gTLDs.  

Your Domain and the TLD Expansion

With the addition of new top level domains, such as .discount and .cheap, being offered, it is highly recommended to brand owners that they take additional registration steps with ICANN to protect their trademarked domains.  ICANN has recently formed the Trademark Clearinghouse (TMCH), which is a global, centralized database of domain names.  The TMCH has been created so that brand owners can submit their trademark information to validate their rights to a particular mark and help protect such trademark holders during the expansion. 

The TMCH provides what is known as the “Sunrise” service period to those that have registered with the TMCH, allowing trademark holders to have priority access to requested domain names associated with their trademarks before the general public is given access to the same.

Another service the TMCH provides is the Trademark Claims Service.  This requires Registries to check new domain registrations against the TMCH database.  Any registrations that match a registered domain with the TMCH, the Registry must notify the party attempting to register the domain name, and then the trademark holder if such party goes forward with that registration.  This allows trademark holders to take immediate action towards any new domain registrations if it is infringing on their protected rights. 

However, registration with the TMCH comes with a price.  Base registration fees start at $150 per year for registration; $435 for a three-year registration; and $725 for a 5 year registration.  Therefore, if a trademark owner has more than one or several marks to register, that owner should carefully plan which trademarks are to be registered and which ones should not be registered with the TMCH.

Looking for additional information that better explains the Trademark Clearinghouse and its services, or get assistance in determining which trademarks to register with the TMCH, contact one of our experienced attorneys.