As Loginov gets logged out, a Kat mewses: are the new gTLDs a friend or foe?

Readers are again treated today to the thoughts of our very own emeritus Kat, Catherine Lee, who has been taking a look at some of the less enjoyable aspects of the new generic top-level domains that have excited the greed creativity of so many good souls.  This is what she writes:

A songbird is every cat's
must-have item this year ...

It is always a good day for this Kat when intellectual property-related issues somehow make the newspaper gossip pages: this morning she learnt that American singer-songwriter Taylor Swift has apparently registered the domain names taylorswift.porn and taylorswift.adult. As part of a significant expansion of the internet, hundreds of new generic top level domain names (gTLDs) are coming onto the market place such as .porn, .adult, .bank and .science.  In the coming weeks, this Kat notes that the sunset period for domain names with the level .wedding and .flowers is due to close and the sunset period for domain names with the level .football and .school is due to open.  The calendar for releases is here.  This Kat could not help but wonder: is this development a technical saviour or an unnecessary hassle for trade mark owners? should trade marks owners obtain defensive domain name registrations for their brands in all relevant new gTLDs just in case?  

There are two ways of purchasing domain names in this new gTLD environment: using the Trademark Clearinghouse and doing it yourself. 

The Trademark Clearinghouse approach 

According to ICANN, the Trademark Clearinghouse is a global repository for trade mark data which will verify trade mark data from multiple global regions and maintain a database with the verified trade mark records.  The verified data in the Trademark Clearinghouse will be used to support 'Trademark Claims' and 'Sunrise Services', both of which are required in all new gTLDs.  The Trademark Clearinghouses' 'Sunrise Services' allow trade mark holders an advance opportunity to register domain names which correspond to their marks before domain names are generally available to the public. The Trademark Claims period follows the Sunrise period and runs for at least the first 90 days of an initial operating period of general registration.  During the Trademark Claims period, anyone attempting to register a domain name matching a mark that is recorded in the Trademark Clearinghouse will receive a notification displaying the relevant trade mark information.  If the notified party goes ahead and registers the domain name, the Trademark Clearinghouse will send a notice to those trade mark holders with matching records in the Clearinghouse, informing them that someone has registered the domain name. 

Unfortunately for those of us who have to count our pennies, the Trademark Clearinghouse service is not free.  Each trade mark which is registered with the Trademark Clearinghouse attracts a registration fee (generally US$ 150 for one year, US$ 435 for three years or US$ 725 for five years) ["How literally odd!" exclaims Merpel, who wonders what happens for people who want to register for an even number of years. Can't the computer handle it?].  For each registration, a trade mark owner can then register 10 labels/variations of the trade mark, with each additional label costing US$ 1).  So if The IPKat wanted to register his Community trade mark for the word IPKAT with the Trademark Clearinghouse, he could register labels such as ipkat, ip-kat, i-p-kat.  Importantly, this does not include the registration fee for the domain name itself.  There would therefore be additional annual charges for registering say ip-kat.porn or ipkat.school. 

Do-it-yourself approach  

For those whose motto is
"Do or Diy"

The DIY approach relies on a trade mark owner not using the Trademark Clearinghouse service but registering the domain name itself at the end of the Sunset period.  After the Sunset period closes, the General Availability period opens.  However, the first seven days of General Availability comprise the Early Access Program. There is a fee for registering during this seven day period which is calculated on a sliding scale (ie days closer to the end of the Sunset Period are more expensive than days which are towards the end of the Early Access Program).  Even this can be very expensive, with this Kat having seen prices in the region of thousands of pounds to register domain names within gTLDs on day one of the General Availability phase.  After the Early Access Program closes, it is possible to purchase the domain name through a domain name register in the usual manner. 

The risk of doing nothing 

The dangers of trade mark owners not availing themselves of the Trademark Clearinghouse or doing it themselves approaches can be seen in relation to the recent release of the .lawyer, .attorney and .legal gTLDs.  

Most readers will probably not be aware of Mr Mykhailo Loginov and/or Loginov Enterprises doo (henceforth 'Loginov') in Serbia.  When the Sunset period expired for .lawyer and .attorney gTLDs in early October 2014, Loginov registered either or both of these gTLDs for at least 50 major UK and US law firms. In some instances, the domain names were 'parked', in other instances the domain names were for sale and in further instances, the pages contained links to law firms and legal providers who were not the law firm whose name was contained in the domain name.  

As far as this Kat is aware, three law firms so affected have taken domain name proceedings against to recover the domain names which relate to their trade marks: Gibson Dunn & Crutcher LLP, McGuire Woods LLP and Clifford Chance LLP..  The cases, decided by either the National Arbitration Forum or the WIPO Arbitration and Media Centre, all ran along the same lines.  That is, the law firm asserted rights and interests in the disputed domain name, and asserted that the disputed domain name was confusingly similar to one of its trade marks (ie the trade mark combined with a gTLD which was related to law); Loginov failed to file a response; the law firm argued that Loginov had no legitimate rights in the disputed domain name and that Loginov had registered and used disputed domain name in bath faith (especially in relation to the registration of other law firm names).  In each case the law firm was successful. 

Loginov may have learnt a lesson in that no .legal gTDs (whose Sunset Period ended earlier this month) appear to have been registered in these names.  However, this enterprise may have simply moved on to another industry whose Sunset Period has not expired or a third party may have already registered .legal domain names for other law firms.

The IPKat asks readers: do you think that new descriptive gTLDs serve a valuable purpose in today's crowded internet?  Or do you think that they are a clever ploy to annoy, distract and extract money from trade mark owners, whether it be through Trademark Clearinghouse / Early Access Program registration fees or through arbitration costs/panel fees? Merpel also wants to know: does it matter what your domain name is any more, now that most of us don't use them to find the site we're looking for?