February 2, 2015

From .COM to .BANK: What You Need to Know About the Newest Internet Domain Name

In just a few months, the new .BANK Internet domain will open up to members of the financial services community. Many banks are already planning on taking advantage of this change and applying for this new verified, secure domain name. Presently, the .BANK domain is expected to become available to the general public on June 1, 2015, and will be awarded on a “first-come, first-served” basis. This alert outlines what your bank needs to know about “.BANK.”

What is the .BANK generic top-level domain?

A generic top-level domain is best known to Internet users as the suffix at the end of a domain name, such as .com, .net, and .org. These top-level domains are managed and registered by the Internet Corporation for Assigned Names and Numbers (ICANN). In 2008, ICANN approved a program to open up the Internet to thousands of new top level domains. As a result of that decision, a new domain, .BANK, is about to become available to members of the financial services industry.

In response to this highly anticipated event, an organization known as fTLD Registry Services has been established to operate the .BANK top level domain. To ensure that .BANK can only be registered by actual financial institutions, fTLD Registry Services has created several security measures and eligibility restrictions. As such, only verified members of the banking community will be able to register .BANK domains. When the .BANK domain becomes available for registration, fTLD Registry Services will have a website dedicated to guiding applicant banks through the registration process.

I have a federally registered trademark on my bank’s name. Do I have to wait until June 1, 2015 to apply for a corresponding .BANK domain name?

No. Trademark owners are eligible to take advantage of a “Sunrise Period” and apply for their .BANK domain names beginning on May 1, 2015.

To help brand owners protect their intellectual property, ICANN has established a Trademark Clearinghouse, available here. Owners of federally registered trademarks (or trade names or service marks) may use the Clearinghouse to record their trademarks and apply for the .BANK version of that domain name during this Sunrise Period. The Clearinghouse registration costs $150 per trademark, per year, although a different fee structure is available for banks planning to register a large number of trademarks. State-level or other trademarks do not qualify.

Importantly, however, trademark owners should be aware that this priority registration is only available if they are seeking to register a .BANK domain name that is an exact match to their trademark registration. In other words, whatever comes before the .BANK suffix must be identical to what is in the registered trademark.

I have a registered trademark, but wish to apply for a .BANK domain name on a slightly different version of that mark. Can I take advantage of the sunrise period beginning on May 1, 2015?

No. Only trademark owners seeking to register a .BANK domain name that is identical to their trademark registration can pre-register for such a domain name beginning on May 1st. Even if the domain name will differ in a seemingly minor way from what is in the trademark registration, the applicant can only apply for this .BANK domain level with the rest of the general public beginning on June 1, 2015.

Do I have to have my organization’s name trademarked to apply for a .BANK domain name?

No, a registered trademark is not necessary to apply for a .BANK domain name. But in this case, your organization will only be able to apply for a domain name beginning on June 1, 2015.

If I do not own a registered trademark on the name I want, what is the risk of waiting until June 1, 2015 to apply for a .BANK domain?

We encourage you to discuss this question with an attorney. In many cases, there may be no problem with applying for your .BANK domain when it becomes generally available on June 1, 2015. Potential conflicts may arise, however, for certain, ubiquitous names that are common in the industry and for which a variety of competing trademark rights may exist. In such cases, the first trademark owner to submit a trademark registration to the Clearinghouse during the Sunrise Period will be entitled to the .BANK domain name using that mark. Because it takes many months to obtain a federal trademark registration, filing a new application now (to try to obtain a registration before May) is probably futile.

During the first 90 days of the general availability period (June 1 – September 1), anyone attempting to register a domain name matching a trademark that has already been recorded in the Clearinghouse will receive a notification that the domain name has already been registered.

What should I be doing to prepare my organization?

While awaiting the arrival of the Sunrise Period, we encourage financial services organizations to review their current trademark portfolios to ensure that key brands are registered with the United States Patent and Trademark Office. Banks should also consider listing their registered trademarks with the Clearinghouse prior to May 1, 2015, as this is necessary in order to participate in the Sunrise Period. In the meantime, banks should take comfort in the fact that a thorough screening process has been enacted to ensure that only bona fide financial intuitions will be able to secure .BANK domain names, even during the general availability period.

What should I do right now?

If you have any further questions, please contact your Goodwin Procter attorney, or the authors of this article, for more information.