• Professional News
  • 28 October 2013

Registration open for alternative domain names

From 29 October 2013, domain names may be registered under a number of new top-level domains giving companies new opportunities for using their trademarks. However, this also requires companies to strengthen their focus on protection against infringement.

In 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) opened up for the registration of new generic top-level domains (gTLDs), such as .fashion, .shop and .legal as an alternative to the traditional top-level domain names, such as .com.

With the application period for gTLDs at an end, it is now possible to apply for the registration of second-level domains. A second-level domain is the word in front of the gTLD, for example bechbruun.legal.

Moreover, trademark owners may apply for registration of their trademarks as second-level domains. For example, the owner of the trademark BECHBRUUN may now register the domain name www.bechbruun.clothing.

ICANN has established the Trademark Clearinghouse to protect trademark owners’ rights and preferential position. Registration in the Trademark Clearinghouse database offers a strong platform for monitoring and enforcing trademarks rights, including Trademark Claims service and Sunrise periods.

Trademark Claims service
Trademark Claims service offers trademark owners the opportunity to be notified when a gTLD administrator has started selling second-level domains under the gTLD in question within a period of minimum 60 days.

Trademark owners will be notified if anyone applies for registration of a second-level domain that is identical with a trademark registered in the Trademark Clearinghouse. If the second-level domain is registered anyway, the trademark owner will be notified after registration has taken place. As a result, trademark owners may protect their interests via dispute resolution bodies, which settle disputes about second-level domains under the new gTLDs.

Sunrise periods
Sunrise periods provide trademark owners with the opportunity to register their trademarks as second-level domains under the new gTLDs before registration opens for non-trademark owners and trademark owners who have not registered their trademarks in the Trademark Clearinghouse. Sunrise periods run for at least 30 days prior to general availability of second-level registrations in the new gTLD.

Trademark owners will be notified if anyone applies for registration of a second-level domain that is identical with a trademark registered in the Trademark Clearinghouse. In the event that two or more trademark owners wish to register the same trademark as a second-level domain under the same gTLD, it will be up to the administrator to decide on a method for determining who will be allowed to register the trademark as a second-level domain. Such methods could be a first–come, first-served approach and tender rounds.

Up-coming sunrise periods:
on Tuesday 29 October 2013, the sunrise period opens for the following gTLDs:

  • .camera
  • .clothing
  • .lighting
  • .singles
  • .ventures
  • .voyage
  • .guru
  • .holdings
  • .equipment
  • .bike
  • .estate.

How can we help?
If you have not yet registered your trademark in the Trademark Clearinghouse, there is still time.

Bech-Bruun cooperates with a number of external partners, who offer services related to registration in the Trademark Clearinghouse.

If you wish to know more about registration of top-level domains and second-level domains, please contact:

Partner Claus Barrett Christiansen
Lawyer Nis Marinus Dommergaard
Lawyer Louise Mühlbach

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