In the Know

Do You Want a “.health” Web Domain Name? Do You Want to Prevent Others from Using Your Trademark in a “.health” Web Domain Name?
May 2, 2017
Alerts
Arnall Golden Gregory LLP
“.health” (dot - health) is one of the newest domain extensions (also known as Top Level Domain, or TLD), reserved for brands, organizations, and people who provide health products, services, and/or information. The new domain extension is touted as a new tool for healthcare providers and health technology companies to further develop their brand online. Billed as “the premier web address for those who are advancing the health and wellness industry,” .health domain names will be available to the general public on December 5, 2017 (pursuant to the domain’s terms and policies). The .health domain extension may be viewed as an opportunity to add credibility to a domain in the healthcare space, but the registration process can also present challenges to trademark owners in protecting their intellectual property. Depending on the trademarks an organization holds or the role it plays in the healthcare industry, some healthcare entities may be able to reserve a .health domain name sooner than December 5, 2017, and should be mindful of these opportunities to protect their intellectual property and the risks of failing to act within this time period.

Specifically, certain qualified healthcare entities can immediately apply for a single-use token, which will be distributed when the industry access period begins on July 20, 2017.

Additionally, owners of federally recognized trademarks in the healthcare industry can record their trademarks with ICANN (the Internet Corporation for Assigned Names and Numbers). Such trademark owners may then apply for the .health version of their registered trademark during a “sunrise phase” that runs between May 8, 2017 and July 7, 2017. Indeed, this sunrise phase is an important time for trademark owners to protect their brand name and preserve their intellectual property. Even if such organizations do not intend to use the .health version of their trademark right away, trademark owners in the healthcare space can register the .health version of their trademark to prevent others from doing so during the industry access period (which runs from July 20, 2017 to November 30, 2017), or when registration opens to the public on December 5, 2017. Failing to register during the sunrise phase may allow other healthcare companies, perhaps even competitors, to register the trademark’s domain name with a .health extension during the industry access or public registration periods. Even if the competing registrant does not use or otherwise violate the trademark owner’s protected brand name, allowing a competitor to purchase the .health version of a trademark could still dilute the original trademark. Moreover, such action would prevent the lawful trademark owner from using its own brand name with a .health extension.

In addition to .health, other new domain extensions or TLDs are becoming available, many of which may be of interest to organizations in the healthcare space. Whether these TLDs are viewed as an opportunity or as a threat to intellectual property, it is important to understand the registration process. For more information or assistance with your trademarks, trademark registration with ICANN, single-use token applications, or .health domain registrations, please contact Tucker Barr or Sean Sullivan.

Dates to know:
Now: Healthcare entities may apply for a single-use token.
Now: Owners of trademarks may register with ICANN.
May 8, 2017–July 7, 2017: Owners of trademarks registered with ICANN may apply for .health domain.
July 20, 2017–November 30, 2017: Single-use token holders may apply for .health domain.
December 5, 2017: Registration opens to public registrants that meet .health terms and policies.

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