Trademark Infringement on new gTLDS. What every brand needs to know!

traverselegal - July 29, 2014 - Cybersquatting Law

With the new root extensions for domain names being rolled out by ICANN over the next several years, trademark owners have an increased risk of trademark infringement against their marks.  Even though the new extensions are being created to increase domain name availability, trademark owners who are not able to register their trademark under the appropriate root extensions run the risk of trademark infringement by cybersquatters.

For example, with the recent release of .BIKE from ICANN, only a small portion of registrations were actually registered by brand owners.  Several registrations were made by third parties with no relation to such brands or were reserved by Donuts for unknown purposes.  These registrations by non-brand owners allows them to possibly create domains that could be confusing to the general public causing consumers to think that this domain could somehow be affiliated with the trademark or brand owner. It is recommended that trademark and brand owners who are not ready to register under any of the new gTLD root extensions should highly consider registering their marks with ICANN’s Trademark Clearinghouse for added protection of their brand and from cybersquatters.

But what options are available should a cybersquatter register a similar mark under one of the new gTLD root extension?  Brand and trademark owners can file a complaint with ICANN under the Uniform Rapid Suspension System (URS), which is a faster and lower cost option to the filing of a claim under the Uniform Domain Name Dispute Resolution Policy (UDRP).  However, the UDRP may be a better option depending on the nature of your situation.  Brand and trademark owners can also file a lawsuit with the appropriate jurisdiction for trademark infringement depending on the nature of the infringement.

If you have a registered trademark and you need help registering under the currently released domain name root extensions, need help in reserving a domain name under a new gTLD and/or need assistance in the filing of a complaint for trademark infringement against a cybersquatter, contact one of the experienced domain name attorneys at Traverse Legal.  They have the knowledge and experience to help you with not only a standard registration, but also with more complex issues such dealing with a cybersquatter hijacking a domain name that is clearly similar to your mark or brand.

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This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.