Canadian Lawyer InHouse

By Catherine Lovrics and Sharyn Costin Are your clients ready for the launch of new gTLDs? Brand protection online will now include a strategy around the new domain names. I CANN's new Generic Top-Level Domain program has been forging ahead, and it is expected that about 500 new gTLD applications will launch beginning in late summer. Applications have been filed for a wide and varied range of new domains, including .buy, .music, .app, .cloud, and .coupon.  Some of these domains may rise in popularity, bringing with them potential new business opportunities, and also challenges, including to trademark protection and enforcement. There are a number of measures companies can take to begin preparing (or bracing) for the launch of new gTLDs.  Among the first steps is reviewing the list of possible gTLDs that will launch, and determining which are of greatest potential interest or concern.  This is likely an exercise that will involve both marketing and legal, with a focus on brand building and protection. The full list of applied-for gTLDs and the status of the respective applications is available online: gtldresult.icann.org/ application-result/applicationstatus. Trademark owners preparing for the launch of new gTLDs have probably seen several announcements that the Trademark Clearinghouse is now open for business.  The TMCH is a centralized system that verifies the existence of trademark rights for all new gTLDs. There has also been an indication from the .jobs registry that it will use the TMCH when it opens up. The TMCH is generally only available to owners of registered marks. Trademark owners that have their marks recorded in the TMCH: enforcement. Practically, the TMCH may be of limited value from an enforcement perspective, given it only protects the identical mark, and only for a limited period. Importantly, the TMCH does not block registration of domain names that are identical to the mark. The importance of domain name watch services is likely to increase with the launch of new gTLDs, The TMCH is a centralized system that verifies the existence of trademarks for all new gTLDs. 1) can register identical domain names on new gTLDs during "sunrise" periods before the general public; 2) will have notice of their registered marks given to anyone trying to register an identical domain name on a new gTLD, and the notice will warn of possible infringement; and 3) will receive notice if the identical domain name is registered. The notice system (which is called a claims service) does not prevent or block registration of domain names.   The TMCH is a valuable service for trademark owners who want to register domain names that are identical to their marks.  However, from an enforcement perspective, trademark owners, particularly with large portfolios, may be selective with the marks they record in the TMCH, and with defensive registrations, considering the overall budget for domain name and there will likely be separate trademark protection services that will be offered by large registries, like Google and Donuts. These services may prove more useful than the TMCH with time, and should be considered when creating an enforcement strategy. Developing a comprehensive online brand protection strategy will now need to address the launch of new gTLDs as part of a general brand building and enforcement strategy. Trademark owners can start thinking about which domain names they will use for marketing purposes, and which domain names, if any, they want to register defensively to prevent third parties from registering them. IH Catherine Lovrics is an associate lawyer  and Sharyn Costin a partner in Bereskin & Parr LLP's Trademarks practice group. w w w. c a n a d i a n law y er m a g . c o m / i n h o u s e august 2013 • 11

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