As New gTLDs Are Launched by ICANN, Are You Protecting Your Brand?

alertFor those of you that do not know, the Internet Corporation for Assigned Names and Numbers (ICANN) is launching new generic top-level domains (gTLDs). This program is going to create hundreds of new “dot-somethings” such as:

.donut

.food

.cars

.music

.party

.paris

 As of today, over 175 new gTLDs have already been delegated by ICANN. You can see the new delegations thus far here. According to ICANN, over 1,300 new names or “strings” could become available in the next few years.1 This is the most significant expansion of the domain name system ever and you and your business need to be prepared. Failure to prepare can result in cybersquatting and trademark infringement issues as third parties will have the ability to register new gTLDs with your trademark.

So, how can you be proactive and protect your trademark? Have your trademark attorney register your trademarks with the Trademark Clearinghouse.2

What is the Trademark Clearinghouse (TMCH)?

The Clearinghouse was created by ICANN and is a mechanism built into the new gTLD Program which functions by authenticating information from rights holders and providing this information to registries and registrars. The key benefit to registering a trademark with the Clearinghouse is that it enables you access to the Sunrise registration period with new gTLD registries. The Sunrise Period is a mandatory initial period of at least 30 days before domain names are offered to the general public. Trademark owners can take advantage of this pre-registration period to safeguard the domain name that matches their trademark. All new gTLDs have to hold a Sunrise Period, and having a verified trademark entry in the Clearinghouse is the minimum requirement to participate in this pre-registration period. Current Sunrise Periods are located here.

To obtain a domain name registration during a Sunrise Period, an applicant must provide proof of actual use of the mark. Proof of actual use can be submitted during the TMCH registration process. All trademarks submitted to the Trademark Clearinghouse for registration are independently validated prior to TMCH registration.

Trademark owners who do not register domain names during the applicable sunrise period still have an opportunity to register desirable domains during the general registration period, which is available on a first-come, first-served basis.

Once registered, you will receive notification from the Clearinghouse when a domain matching your trademark has been registered. When and if you receive a notification from the TMCH, contact your trademark attorney to discuss options for enforcing your trademark.

What are the Limitations of the TMCH?

It is important to note that Trademark Clearinghouse registration has some significant limitations, including the following:

  • Registration with the Trademark Clearinghouse does not prevent a third party from obtaining a domain name that includes a registered mark.

  • In general, only nationally and regionally registered marks are eligible for Trademark Clearinghouse registration. A common law or unregistered mark is eligible only if the mark has been validated by a court or is protected by a statute or treaty.

  • The Trademark Clearinghouse provides protection only against exact matches. For example, the TMCH will not send notifications of plural or sound-alike domain name registrations.

  • Only words in marks are eligible for registration; design marks and graphic or design elements are not eligible for TMCH registration.

  • Marks that include any of the existing top level domain names (e.g., .com) or that include a dot (“.”) are not eligible for TMCH registration, unless the “dot” functions as punctuation or an abbreviation.

  • TMCH registration will not prevent an infringer from obtaining an infringing domain name. But it will give the brand owner notice of the new, infringing domain name. Then the brand owner will need to take further action to protect its mark.

If you have any questions about the Trademark Clearinghouse or protecting your brand, please contact John Buche, jbuche@buchelaw.com or 310.593.4193.

© 2014 Buche & Associates, P.C. All rights reserved. www.pacificpatentlawyers.com

 

Notice: This post may be considered attorney marketing and/or advertising. The information contained in this post is for informational purposes only and is not intended and should not be considered to be legal advice on any subject matter. As such, recipients of this post, whether clients or otherwise, should not act or refrain from acting on the basis of any information included in this post without seeking appropriate legal or other professional advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship.

1http://newgtlds.icann.org/en/program-status/delegated-strings, accessed 4/9/2014

2 http://newgtlds.icann.org/en/about/trademark-clearinghouse, accessed 4/9/2014