Yesterday evening I attended a talk by Tony Willoughby on domain name disputes, which gave an interesting insight into the process of enforcing your trade mark rights under the current Nominet and ICANN procedures. Prior to the talk the topic of conversation included the introduction of new generic top-level domains, or gTLDs, by ICANN and the potential impact on trade mark owners (and their purses) an increased number of suffixes might have.
Following the announcement in June 2011 that gTLDs were going to be opened up to .anything, .everything and .everyone, as summarised on our previous Naked Law blog post, ICANN announced earlier this week that there will be a further opportunity for trade mark owners to protect their rights.
From 26 March 2013, rights holders will be able to submit their trade marks for verification to the Trademark Clearinghouse. Once independently verified by the Clearinghouse the trade mark owner will have the opportunity to register their trade marks as domain names for each new gTLD before the general public. They will also benefit from an alert service which will notify the trade mark owner when a domain name is registered that matched the trade mark in the Clearinghouse register.
The proposed cost is $150 for recording one trade mark for one year. Trade mark owners are however likely to face additional costs if they decide to register additional domains and the alerts service appears to work like current trade mark watch services, leaving it up to the trade mark owner to decide whether to pursue the registrant in order to obtain the offending domain name.