The “.creditunion” top-level Internet domain became available to the United States credit unions that hold federally-registered trademarks on May 4, 2017. The “.creditunion” domain offers credit unions a unique URL that they can secure for branding purposes as well as protection against cybersquatters. However, in order to secure a .creditunion URL during the domain’s “Sunrise Period”, credit unions must 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 “.creditunion” domains that correspond with its trademarks. Ownership of a trademark does not grant the right to a “.creditunion” domain with that trademark. Rather, domain names will be given out on a “first come, first served” basis. That is, even though a credit union may own and operate a “.com” with its trademarked name as the URL, it is not automatically entitled to register that name with the “.creditunion” domain. Rather, if a credit union owns a nationally registered trademark, it may register that mark with the Trademark Clearinghouse and then may apply for a “.creditunion” domain during the “Sunrise Period,” which will run from May 4, 2017, through June 3, 2017. 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 “.creditunion” domain. The domain must be identical to the trademark. For example, if a credit union’s trademark is “ABC Credit Union” it can only seek to register the domain “ABCCreditUnion.creditunion” during the Sunrise Period, and not “ABC.creditunion.” 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.
After the Sunrise Period, beginning on June 6, 2017, “.creditunion” domains become generally available on a “first come, first served” basis. Federal trademark registration is not required in order to obtain a “.creditunion” domain once general availability begins. During this time, the domain name is only required to correspond to a credit union’s name or brand, and allowances are made for certain modifications, including dropping “credit union” from the domain and including or dropping abbreviations or acronyms.
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 “.creditunion” opens for general registration (i.e. June 6, 2017, through September 4, 2017). 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 credit union’s trademarks with a “.creditunion” 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 credit union will be able to obtain “.creditunion” domains which correspond to its trademarks.
Please note that this advisory is a general overview of the requirements to obtain “.creditunion” domains. Cullen and Dykman is a registered agent with the Trademark Clearinghouse. If you have any questions regarding this matter or need assistance with registering a “.creditunion” domain, please feel free to contact Karen I. Levin at 516-296-9110 or via email at klevin@cullenanddykman.com, Jennifer A. McLaughlin at 516-357-3713 or via email at jmclaughlin@cullenanddykman.com, or Ariel E. Ronneburger at 516-296-9182 or via email at aronneburger@cullenanddykman.com