Author: Gavin Law Offices

As you may know, the Internet Corporation for Assigned Names and Numbers (ICANN) recently decided to open up more than 1,000 domains outside of the .com, .net, and .biz variety. Many new domains are now available and more are coming online every day. As we discussed late last year, these new domains provide both opportunity and potential problems for your business.

The new domains are beneficial because they allow you to register simpler domain names. Simpler domain names are easier to remember and thus easier to find. For example, a coffee house in Las Vegas might currently have the domain name “coffeeshoplasvegas.com” but could now register the domain name “coffee.vegas.” Further, many of the new domains are industry specific, such as .build, .contractors, and .travel. Thus, a business will now be able to alert the public of its industry using its domain name.

Although there are benefits, these new domains also provide more opportunities for cybersquatting and greatly expand the potential for trademark infringement. Now that all the information regarding these new domains is available, we have researched exactly how you should protect your brand from trademark infringement. We would be happy to help you develop a strategy for protecting your trademarks while also efficiently and effectively defending your brand.

To protect your trademarks, best practices suggest you register with ICANN’s Trademark Clearinghouse. The Trademark Clearinghouse is a centralized database that provides protection to registered trademarks. Once you have registered, Trademark Clearinghouse will notify you when a third-party registers a domain name that matches your trademark. You will then be able to have that domain taken down. Unfortunately, the Trademark Clearinghouse will only alert you to domain names that are an exact match to your trademark. An exact match may include domain names that have asterisks or hyphens (even if your trademark does not contain asterisks or hyphens), but would not include domain names that are spelled differently. It will therefore still be necessary to investigate potentially infringing domain names using resources such as namedroppers.com.

Although the Trademark Clearinghouse only protects against exact matches, it allows trademark holders to register with only one database, as opposed to registering their trademarks with many databases as new domains are launched. It is therefore more convenient and cost effective for trademark holders to register with the Trademark Clearinghouse. The Trademark Clearinghouse also gives registered trademark owners first priority in registering when new domains become available. The cost for registering with the Trademark Clearinghouse varies depending on how many trademarks a business registers. ICANN gives a discount to businesses registering multiple trademarks, with the discount growing larger as the number of trademark registrations increases. If you are interested in pursuing registration with the Trademark Clearinghouse, we can investigate further your exact costs.

To further protect your trademarks, you may also register with Donuts.co. Donuts.co is one of the largest registries for new domain names, having applied with ICANN for 307 new top-level domain names. Registration with Donuts.co requires that you first register your trademark with the Trademark Clearinghouse. The advantage to registering with Donuts.co is that they immediately block domain names containing your trademark (and thus you would not have to go through the process of receiving a notification and then getting the infringing domain taken down). Donuts.co also blocks domain names that contain your trademark within the domain name. For example, if Apple registered its trademark with Donuts.co, and someone later tried to purchase “myapple.computer,” Donuts.co would block that registration since the domain name includes Apple’s protected trademark. However, Donuts.co does not protect against spelling variations; thus, Donuts.co would not prevent someone from registering “myaple.computer.” If you are considering registration with Donuts.co, we can discuss exactly which marks should receive this extra level of protection and help you with the registration process.

Please contact us if there is anything we can do to assist you in registering your trademarks with either the Trademark Clearinghouse or Donuts.co. We would be happy to address any questions or concerns you may have regarding this process.