New Top-Level Domains Starting Up

Since December 24, 2013, companies can, in the “sunrise period”, pre-reserve their trademarks for top-level domain names such as .carreers, .recipes, .photos, .shoes, .domain, .company or .computer.

It is not sufficient to hold the trademark rights, but you must also have them registered in advance with the “Trademark Clearinghouse (TMCH)”. If you want to see your company under the
top-level domain name .shoes (for example: [your trademark]. shoes), you need to document your trademark rights with the TMCH, quickly. You can do this directly or through registered agents. Many other, perhaps even more interesting, top-level domain names will follow over the next few months, such as .hotels, .shop, .store, .market, .deals, .mobile, etc. The registration of domain names under these top-levels will always require pre-registration with the TMCH.

The registration of trademarks with the TMCH has another positive effect: if others wish to register their own trademarks as a domain name under a top-level domain, the trademark holder will be notified thereof in advance. This will presumably avoid many disputes. The simple registration fees for the TMCH are $150 for one year, $435 for three years, and $725 for five years.

The securing of trademark rights through the TMCH will surely not mean that all domain name disputes can be avoided. In particular, registration with the TMCH only helps in case of almost identical domain names. Deviations in single characters within a word cannot be prevented. Nevertheless, this is an initiative that is to be welcomed because the important cases where a third-party trademark is used identically can often be avoided this way. International domain name law already provides for out-of-court dispute resolution proceedings in many cases, but these often cost the trademark holder money because they usually do not provide for the refunding of costs for the winner of the case. Many domain name disputes that go to arbitration end up with the complaint being submitted and the domain grabber making no contribution to the proceedings.

In many cases (e.g., in the UDRP proceedings of the WIPO or of the Czech Court of Arbitration or in .eu-domain name disputes), the domain name is then transferred to the complainant. The complainant, however, still has to pay procedural costs and any lawyers’ fees incurred by the drafting of the complaint. The refunding of costs by the opposing party is only rarely legally possible and practically almost never enforceable.

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