Posts by: Ann-Charlotte Järvinen | (2) posts

No, no more top-level domains!

2013 will see the launch of a ton of new top-level domains – perhaps as many as two thousand new generic top-level domains (gTLDs). This is sending ripples through a good many companies because they already have web addresses that are familiar to their clientele and don’t see the need for further domain names. These days, companies prefer to concentrate on directing web traffic to a main website by marketing and technical means, as opposed to drumming up traffic with a multitude of domain names.

There are risks to this anticipated explosion in gTLDs. We noted for instance in connection with previous launches of new top-level domains that certain elements would capitalise on this to turn a ruthless buck. The sheer volume of new top-level domains will also be a headache in terms of manageability and control. In order to intervene on any trademark abuses, the entity responsible for all top-level domains, ICANN, has set up Trademark Clearinghouse to serve as a centralised trademark repository for the new gTLDs. Trademark Clearinghouse is expected to go live at some time in 2013 when the first new top-level domains are launched. The finalised rules to be applied by Trademark Clearinghouse are likely to be presented in spring 2013.

The aims for Trademark Clearinghouse will be twofold:

1) Trademark surveillance for a limited period of time

2) Priority access to register a domain name based on a previously registered word trademark

Access to using Trademark Clearinghouse will require the user to hold a registered word trademark or to have acquired word trademark protection by common-law use. Documentation to prove that such protection is enjoyed will be required.

We know how important it is to protect trademarks via the various electronic services that are available. Aside from surveillance in the trademark register, there is the option of running surveillance on domain name registrations. These forms of surveillance permit measures to be taken to prevent infringement at an early stage. There are currently simplified dispute resolution procedures for domain names that can be used in the first instance to reclaim or deregister a domain name.

Awapatent’s trademark attorneys have experience acting as legal counsels in domain name disputes in courts and can assist in alternative dispute resolution procedures. We can also assist clients seeking to register word marks at the Trademark Clearing House and produce the evidence required for registration.

Ann-Charlotte Järvinen, Attorney at Law, European Trademark Attorney

Are trademarks protected on the Internet?

That’s a question I am often asked by my clients. Every time new top domains are launched many clients feel compelled to register – and pay for! – yet more new web addresses in order to prevent a pirate from getting his hands on their trademark or brand name. But is there any real commercial advantage for the client in registering another new address?

Trademark attorneys like me are frequently made aware of our clients’ misgivings about trademarks on the Internet. Many swindlers cash in on this anxiety by claiming (as certain Asian companies do) that a third party has applied to register the company’s trademark or brand under a number of Asian top domains, and that it is imperative to take swift action to prevent these registrations.

There is no need to panic in cases like this. Instead, all you need to do is to make sure that your company has a reliable domain name supplier and a trademark attorney that you can contact. Together, these two people can help you to ensure that your company’s trademarks and brand names are fully and properly protected. They can also tell you quickly whether there is any genuine need to register the domain name in question.

Stockpiling trademark registrations and domain name registrations purely to defend your brand is not something that I or any of my colleagues would recommend. The costs involved for registration and administration are often totally out of proportion to what a company stands to gain by such defensive action. Moreover, trademark law includes a requirement that a brand or trademark must be used within a specified period of time; if it is not used, the registration can be revoked. The important thing is, first and foremost, to ensure that you have adequate and effective protection in those markets where your company is active or plans to be active within the foreseeable future. It is also important to keep a close watch on your trademarks, brands and domain names. In the same way as there are services you can subscribe to that notify you when a trademark is published in the trademark register, you can also subscribe to services that alert you if your trademark is registered as a domain name.

But how should you act if your trademark is registered as a domain name? The first step is usually to check whether any rights already exist or have been registered in the relevant geographical area which would mean that the use of the trademark in a domain name or on a website could constitute trademark infringement. There is also the option of investigating the feasibility of one of a number of alternative dispute resolution procedures, such as those established by the international domain name organisation, ICANN.

In June ICANN published a proposal that aims to simplify this process for the rightful owner of a trademark. The proposal includes plans for a central database containing global IP rights information, which can be used to prevent registrations “in bad faith” when further new top domains are launched. The ICANN proposal also paves the way for a speedier and less expensive dispute resolution procedure and a centralised WHOIS database that contains details of domain name rights holders, registration and renewal dates, etc. from a number of different TLD registries.

The proposed changes will be discussed at a meeting in Sydney at the end of this month. Those of us who work with these issues are pinning our hopes on a more cost-effective and less time-consuming system that guarantees the best protection for our clients’ rights.

Ann-Charlotte Järvinen, Attorney at law