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  • Securing a “.bank” Domain during the Upcoming Sunrise Period

    The “.bank” top-level Internet domain will soon be available to verified financial institutions, offering specialized URLs and enhanced security features to members of the banking community that act quickly to secure their trademarks with the Trademark Clearinghouse operated by the Internet Corporation for Assigned Names and Numbers (“ICANN”).

    Action is needed to ensure a financial institution can register “.bank” domains that correspond with its trademarks. Ownership of a trademark does not grant the right to a “.bank” domain with that trademark. Rather, domain names will be given out on a “first-come-first-served” basis. That is, even though a bank may own and operate a “.com” with its trademarked name as the URL, it is not automatically entitled to register that name with the “.bank” domain. Rather, if a bank owns a nationally registered trademark, it may register that mark with the Trademark Clearinghouse and then may apply for a “.bank” domain during the “Sunrise Period,” currently estimated to run between May 15, 2015 and June 15, 2015. Only word marks are eligible for registration with the Trademark Clearinghouse, which will not accept designs or logos.

    During the Sunrise Period, only trademark holders who have taken the step of registering their mark with the Trademark Clearinghouse will be able to purchase a “.bank” domain. The domain must be identical to the trademark. For example, if a bank’s trademark is “ABCBank” it can only seek to register the domain “ABCBank.bank” during the Sunrise Period, and not “ABC.bank.” Registration for a domain during the Sunrise Period also requires certain legal filings to be uploaded to the Trademark Clearinghouse’s systems, including a declaration of use and a sample of proof of use of a trademark.

    Registration with the Trademark Clearinghouse also provides protection to the holder of a mark during the “Trademark Claims Period,” which is estimated to run for 90 days after “.bank” opens for general registration (i.e. June 15, 2015 through September 15, 2015). During the Trademark Claims Period, if a party is attempting to register a domain name matching a mark in the Clearinghouse, the party will receive notification of the existing mark. If the party then goes on to register the domain despite this notice, the trademark owner will receive notification from the Trademark Clearinghouse of the registration. The trademark owner would then need to seek legal recourse against the domain name holder. It should be noted that in order to receive notice during the Trademark Claims Period the mark registered must be identical to the trademark owner’s mark.

    To ensure registration of a bank’s trademarks with a “.bank” domain during the Sunrise Period, pre-registration of a trademark with the Trademark Clearinghouse is a necessary first step. When the Sunrise Period ends, general registration will be permitted, and there will be no guarantee that a bank will be able to obtain “.bank” domains which correspond to their trademarks.

    Please note that this advisory is a general overview of the requirements to obtain “.bank” domains. If you have any questions regarding this matter or need assistance with registering a “.bank” domain, please feel free to contact Karen Levin at (516) 296-9110 or via email at klevin@cullenanddykman.com, Jennifer McLaughlin at (516) 357-3713 or via email at jmclaughlin@cullenanddykman.com, Ariel Ronneburger at (516) 296-9182or via email at aronneburger@cullenanddykman.com, or Cynthia Thomas at (516) 526-357-3853 or via email at cthomas@cullenanddykman.com.