As we previously reported to you (click here to view April 29, 2013 TLD article), the internet is expanding to include hundreds of new top-level-domains (TLDs) (examples of TLDs as we know them today include .com, .net. and .org – i.e., the term that is to the right of the “dot”). While the only certainty at that time was that the launch was inevitable, like it or not, it’s finally here (click here to view January 9, 2014 Sunrise article).
Frost Brown Todd will be sending out updates on the status of the sunrise and trademark claims notification periods periodically. The below reflects the status as of March 23, 2015:
SUNRISE PERIOD
Sunrise periods for the following TLDs have opened and are scheduled to close on March 27, 2015, after which the trademark claims notification period will begin:
.flowers
Sunrise periods for the following TLDs have opened and are scheduled to close on March 30, 2015, after which the trademark claims notification period will begin:
.wedding
Sunrise periods for the following TLDs have opened and are scheduled to close on April 1, 2015, after which the trademark claims notification period will begin:
.porn
.adult
Sunrise periods for the following TLDs have opened and are scheduled to close on April 6, 2015, after which the trademark claims notification period will begin:
.garden
.fashion
Sunrise periods for the following TLDs have opened and are scheduled to close on April 16, 2015, after which the trademark claims notification period will begin:
.ONG
.NGO
Sunrise periods for the following TLDs have opened and are scheduled to close on April 17, 2015, after which the trademark claims notification period will begin:
.LAT
.college – (College Landrush Period)
Sunrise periods for the following TLDs have opened and are scheduled to close on April 20, 2015, after which the trademark claims notification period will begin:
.fit
Sunrise periods for the following TLDs have opened and are scheduled to close on April 25, 2015, after which the trademark claims notification period will begin:
.video
.sale
Sunrise periods for the following TLDs have opened and are scheduled to close on April 28, 2015, after which the trademark claims notification period will begin:
.design
Sunrise periods for the following TLDs have opened and are scheduled to close on May 5, 2015, after which the trademark claims notification period will begin:
.one
Sunrise periods for the following TLDs have opened and are scheduled to close on May 9, 2015, after which the trademark claims notification period will begin:
.chat
.style
.tennis
.bingo
Sunrise periods for the following TLDs have opened and are scheduled to close on May 16, 2015, after which the trademark claims notification period will begin:
.Irish
.apartments
The following TLDs are awaiting launch of their respective sunrise periods:
.casino
.football
.school
.sucks
.amsterdam
.bank
TRADEMARK CLAIMS
Sunrise periods in the following TLDs (consisting of characters from the English alphabet) have closed and trademark claims notifications have begun (or will begin shortly):
.world – (through April 7, 2015)
.degree – (through April 7, 2015)
.gives – (through April 7, 2015)
.forsale – (through April 14, 2015)
.space – (through April 19, 2015)
.vlaanderen – (through April 20, 2015)
.brussels – (through April 20, 2015)
.band – (through April 21, 2015)
.rip – (through April 21, 2015)
.ooo – (through April 23, 2015)
.ryukyu – (through April 28, 2015)
.energy – (through May 5, 2015)
.delivery – (through May 5, 2015)
.work – (through May 11, 2015)
.casa – (through May 11, 2015)
.LGBT – (through May 11, 2015)
.KRED – (through May 17, 2015)
.yoga – (through May 18, 2015)
.sydney – (through May 18, 2015)
.vote – (through May 18, 2015) (Registrants must have a bona fide intention to use the domain name, during the current/relevant election cycle, in connection with a clearly identified political/democratic process at the time of registration.)
.voto– (through May 18, 2015) (Registrants must have a bona fide intention to use the domain name, during the current/relevant election cycle, in connection with a clearly identified political/democratic process at the time of registration.)
.cymru – (through May 30, 2015)
.wales – (through May 30, 2015)
.coach – (through June 2, 2015)
.memorial – (through June 2, 2015)
.money – (through June 2, 2015)
.legal – (through June 2, 2015)
.firmdale – (through June 15, 2015)
.crs – (through June 17, 2015)
.alsace – (through June 21, 2015)
.nrw – (through June 22, 2015)
.green – (through June 22, 2015)
.tires – (through June 23, 2015)
.taipei – (through June 30, 2015)
.osaka – (through June 30, 2015)
.POKER – (through July 20, 2015)
.tirol – (through August 30, 2015)
.PHARMACY – (through September 1, 2015) (Please note: Registrants must meet standards set by a global coalition that includes International Pharmaceutical Federation (FIP) and NABP.)
.whoswho – (through September 24, 2015)
.rio – (No Trademark Claim deadline listed at this time) (Please note that .rio has a residence requirement for legal entities and individuals in Brazil and other requirements.)
.how – (No Trademark Claim deadline listed at this time.)
.science – (No Trademark Claim deadline listed at this time.)
.party – (No Trademark Claim deadline listed at this time.)
.cricket – (No Trademark Claim deadline listed at this time.)
As a refresher, over 1,900 applications were received by ICANN (the internet’s governing body) from entities who want to run their own TLD registry. Many of these applications have passed the examination period, have contractually signed off on becoming a registry, and have been added to the “root zone”, a key step before a registry can be open for domain name registration. What does this mean for you and your business? Well, it’s time to take action before it becomes too late.
The good news is that trademark owners are still able to take advantage of a central repository system, known as the Trademark Clearinghouse. The Trademark Clearinghouse is a mandatory inclusion in the pre-launch process of any new generic TLD (i.e., the sunrise periods listed above), as well as mandatory checkpoint once new domain names are registered. While this is certainly good news, the downside for our U.S. clients is that only those marks that have been federally registered will be eligible for deposit within the Trademark Clearinghouse – not common law marks; not state registrations; and not domain names. To recap, the benefit of the Trademark Clearinghouse for federal trademark owners is three-fold:
1. Sunrise Service
In order to participate in the sunrise period of any new TLD on the basis of prior trademark rights, a trademark owner must have its trademark registration deposited with, and validated by, the Trademark Clearinghouse. This means that for any generic TLD that is attractive to a trademark owner’s business, trade, or industry (e.g., .food for our clients in the food and restaurant industry or clothing for our clients in the apparel industry), taking advantage of the Trademark Clearinghouse will allow you to seek the domain name identical to your registered trademark (yourmark.TLD). The TLDs that are now in their respective sunrise periods are listed below.
2. Trademark Claims Services
After the sunrise period closes and the new TLD becomes available to the public for domain name registration, each new TLD registry will be required to check new domain name registrations against the trademark registrations that have been deposited with the Trademark Clearinghouse for a period of 90 days. As such, if another entity or individual seeks a domain name registration that is identical to the trademark deposited with the Trademark Clearinghouse (e.g, yourmark.app), you will receive notice of that domain name registration and take appropriate action if warranted.
3. Uniform Rapid Suspension (URS)
Registration with the Trademark Clearinghouse can be used to support URS claims. The URS will be a counterpart to the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) and is designed to handle the “clear cut” cases of cybersquatting and infringement. It is also purported to be a faster and less expensive version of the UDRP. However, URS claims will only be available to trademark owners who have had their rights “validated.” As such, the registration process with the Trademark Clearinghouse will have satisfied this requisite validation.
If any of the above listed TLDs raised your eyebrows or appear to be in line with your business, then we suggest you undergo an evaluation of your trademark portfolio to determine what trademark registrations you should be depositing with the Trademark Clearinghouse. Frost Brown Todd stands ready to assist you with this entire process as Frost Brown Todd is an official Trademark Agent with the Trademark Clearinghouse, which allows us to deposit trademark registrations on behalf of our clients and other federal trademark registration holders. We have already handled such deposits for many of our clients and stand ready to assist others with this process. We are also available to discuss appropriate strategies for more complex trademark portfolios and advise as to alternative options that may be available for those brand owners who do not hold federal registrations for common law marks of concern.
Again, it should be noted that this is not a complete list of the new TLDs as more and more TLDs will be delegated and launched throughout 2015, just as they were throughout 2014. We will continue to update you periodically as additional TLDs are delegated and their respective sunrise periods announced.
Please note: We rely on the World Intellectual Property Organization and the Trademark Clearinghouse for our information. Sometimes these two resources provide conflicting information as to Sunrise periods and Trademark Claims Notifications periods. While we do our best to reconcile any differing information when this situation arises, we are unable to guarantee the accuracy of these resources. If there is a particular TLD of interest to you, please let us know so we can vet the specific information with that particular TLD registry directly.
For more information about this legal update, please contact Samantha M. Quimby, Kathryn A. Comella, or any attorney in Frost Brown Todd’s Intellectual Property Law and Litigation practice.