The Trademark Clearinghouse

The Internet is about to change dramatically. This is because the number of top-level-domains, the letters that come after the dot, will increase significantly. Until now, only 22 generic top-level domains (gTLDs), such as.com,.net, and.org, have been in use. Additionally, there are over 200 country-based domains (e.g.,.us,.uk,.de). In 2013, users will be provided over 1,000 gTLDs to choose from, such as.hotel,.book,.shoes,.doctor, etc. With many more gTLDs, the potential for trademark infringement will increase considerably. As a primary player and provider of Internet communication services, the satellite industry must be especially and proactively vigilant of how the new Internet develops.

In 2012, the Internet Corporation for Assigned Names and Numbers (ICANN), the private company responsible for new Internet governance, accepted applications for gTLDs, and over 1,000 applications were accepted. The concern is over second level domains, which are the letters or words that come in between the www. and the gTLD. For instance, the word ‘intelsat’ is a second level domain in the address www.intelsat.com. When these over 1,000 gTLDs go live in 2013, the possibility for trademark infringement of second level domains will increase dramatically.

Some gTLDs are expected to be brand domains (e.g.,.apple,.walmart,.nike). This means that companies owning the brands will have complete control of the gTLD. All of the other new gTLDs will be controlled by companies that applied for and received authorization to manage each of the gTLDs. The question is: how can a trademark holder, like “intelsat,” keep users from registering the www.intelsat domain across one thousand new gTDLs? One way is to register the trademark with each of the over one thousand gTLD administrators. This would certainly be a time consuming and expensive enterprise; particularly, because some of the new gTDLs will not be in Latin characters. Indeed, the Internet will now have gTDLs with non-Latin characters such as Chinese, Arabic, and Cyrillic.

Fortunately, ICANN is in the process of creating a Trademark Clearinghouse where trademark holders may register their trademarks. All new gTLD administrators will have access to this Clearinghouse, where they may go to prevent users from registering second level domains that exactly match previously registered and recorded trademarks. The Clearinghouse will essentially be a central storage unit of trademark information and the holder of record.

Entering a registered trademark in the Clearinghouse will offer business owners two benefits: (1) the trademark will be registered across all gTLDs before the general public has access to the second level domains; and (2) registered trademark holders will be notified if anyone attempts to register a second level domain that infringes on the trademark.

In addition, the Clearinghouse will contain a dispute resolution mechanism whereby parties may submit claims and resolve disputes of potential trademark infringement.

In order to register a trademark with the Clearinghouse, a trademark holder will have to prove that the trademark is valid through submission of existing country specific trademark registration numbers and other documentation. Trademark holders will also have to prove that the trademark is in use. This will be done by submitting specimens of the trademark such as a picture of the packaging, marketing material, etc.

Not since Al Gore “invented” the Internet has it undergone such a sweeping modification. What this change does is introduce competition by watering down the ubiquitous.com gTLD. It will also serve to make the Internet more international with the introduction of non-Latin domains. However, for trademark holders, it makes cybersquatting (the act of registering domain names in bad faith with the intent to profit from the goodwill of a trademark belonging to someone else) a significant problem.

The Trademark Clearinghouse was created for the purpose of allowing legitimate trademark holders the opportunity to strike first, so to speak. Satellite industry stakeholders are responsible for taking the Internet to the most remote areas of the world. For this reason, satellite industry players should be the first to embrace the new Internet and to advance its efficient governance.