Trademark Law – Protection of word marks at the introduction of the new Top-Level-Domains (07/2013)

Initial situation

In June 2008, the ICANN (Internet Corporation for Assigned Names and Numbers) – which is responsible for the allocation of Top-Level-Domains (TLDs) – decided to introduce new (generic) TLDs. Within the given time frame, it received 1.930 applications, amongst others TLDs named after trademarks or company names (e.g. “.nike”), regional TLDs (e.g. “.bayern”) and TLDs describing their content (e.g. „.shop“).
It is currently expected that the first new TLDs will already be actively operated in the middle of this year, so that Second-Level-Domains (SLDs) can be registered to the respective domain spaces of the TLDs (e.g. „mode.shop“) from that moment onwards. Trademark proprietors can then, for example, register their trademarks as SLDs under TLDs which are of interest to them (e.g. „marke.shop“). However, proprietors of trademarks also see themselves at risk that third parties anticipate their own registration, either to use the SLD themselves, to interfere with the trademark proprietor’s business, or to sell the SLD to the trademark proprietor.

 

The Trademark Clearinghouse

In an extensive set of rules and regulations, the ICANN provided different instruments to take action against the improper registration of SLDs under the new TLDs. As a preventive measure, a central data base (so-called „Trademark Clearinghouse“) has been established, in which the proprietors of trademarks – against payment of an annual fee – can have recorded at least their registered word marks. This recording will have two advantages:

  • Before the introduction of a new TLD, the proprietor has to implement a so-called „Sunrise Service“ of at least thirty days – a period during which only proprietors of word marks recorded in the Trademark Clearinghouse can apply for SLDs identical to their trademarks. However, for such an application, it is also necessary that the mark was already in force on June 26, 2008 and that the proprietor of the mark has proven use of the mark to the Trademark Clearinghouse.
  • At least 60 days upon introduction of a new TLD, the applicant of an SLD identical to a trademark recorded in the Trademark Clearinghouse will be informed about this match. For the continuation of the registration, the applicant will have to confirm to the best of his knowledge that he does not infringe the recorded trademark with the registration and use of the SLD. Immediately after registration of the SLD, the proprietor of the recorded trademark will be informed thereof in order to be able to check the necessity of taking action against the proprietor of the domain (so-called “Trademark Claim Service”).

For further information – also on other possible legal remedies in case of trademark infringement by domain registrations and domain uses – please do not hesitate to contact us at any time.

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