Professionals
Related Practices

ICANN’s Trademark Clearinghouse: Protecting Your Brand in the Impending Internet Expansion

October 21, 2013

Over the next two years, the Internet domain landscape will change drastically.  The Internet Corporation for Assigned Names and Numbers (ICANN) has already begun the process of introducing 1,400 new top-level domains (TLDs) to the .com, .net, .org landscape, with the first new TLDs slated to go live by the end of the year.  The new TLDs, such as .discount and .cheap, will create greater choices for consumers and new business opportunities for brand owners, but also bring with them potentially negative changes as well, including more IP infringement directed at valuable trademarks and brands.

There is no perfect solution to the abuse that will inevitably accompany the massive, rapid expansion of the Internet.  Accordingly, rights protection was a key concern to ICANN when forming the New gTLD Program.  ICANN consulted closely with IP experts and brand owners, registrars, and current and potential registry operators to determine how to best protect trademark holders confronted with the largest ever expansion of the domain name system (DNS).  This resulted in the addition of three new tools to proactively and reactively address potentially infringing domain uses:  the Trademark Clearinghouse (TMCH), the Uniform Rapid Suspension System, and the Trademark Post-Delegation Dispute Resolution Procedures.

The TMCH is a global, centralized database where brand owners can submit trademark information to validate their rights to a particular trademark prior to and during the launch of new TLDs.  To date, over 10,000 trademarks have been accepted into the TMCH.  We believe that all brand owners who are significantly invested in their trademark portfolio should consider utilizing the TMCH. 

What Protections Does the TMCH Provide?

The TMCH allows trademark holders to submit information for trademarks that are: (1) nationally or regionally registered; (2) court validated; or (3) protected by statute or treaty.  Participation in the TMCH permits brand owners to avail themselves of three protections.

 1. Sunrise Service

All new TLDs are required to offer a Sunrise period, i.e., an opportunity for participating trademark holders to pre-register domain names for at least 30 days before domains are offered to the general public.  The trademark holder is entitled to register domain names that are exact matches to their deposited marks during the Sunrise.  This allows brand owners to safeguard against cybersquatting (i.e., registering, selling, or using a domain name that matches a trademarked name with the intent to profit). 

Donuts, Inc., the largest gTLD applicant, has announced that on or about October 29, 2013, it will open the Sunrise period for nine of its new TLDs -- .CAMERA, .CLOTHING, .EQUIPMENT, .GURU, .HOLDINGS, .LIGHTING, .SINGLES, .VENTURES, and .VOYAGE.  The Sunrise period for these TLDs will last 60 days.  Brand owners who wish to register domains matching their trademarks in these TLDs before the public has access must be registered in the TMCH to be eligible to do so. 

 2. Trademark Claims Service

The opportunity to register before the general public is not the only benefit of the TMCH.  Participation also provides the advantage of a Trademark Claims Service.  For a minimum of 90 days after general registration opens, a Registry must check domain name registration requests against records in the TMCH.  If a requested domain name matches a mark recorded in the TMCH, the party attempting to register the domain name will be notified of the match.  Before proceeding with the domain registration, the registrant will have to acknowledge receipt of the notice that their registration may violate others’ trademark rights.  Should the registrant decide to proceed with the registration, the trademark holder will receive notice of the registration. 

While the Trademark Claims Service will not block an infringing registration, it may cause a potential infringer to reconsider the registration and will give trademark holders the opportunity to pursue some course of action against the registrant (e.g., enforcement). 

 3. Trademark+50 Service

The TMCH will also allow for up to 50 previously abusively used or registered domain name labels (as adjudicated by a UDRP or national court proceeding) to be associated with a trademark record.  Associated labels will also trigger notices in the Trademark Claims Service.

Next Steps

On September 30, 2013, ICANN published its final TMCH Rights Protection Mechanism Requirements for operators of new TLDs.  While TLD operators consider and prepare to implement the requirements into their TLD policies, all brand owners should be preparing their strategy for the coming changes to the Internet, including: (1) brand protection, (2) enforcement, and (3) risk mitigation.  Having a brand protection game plan in place before the Sunrises begin to open is very important given that hundreds of new TLDs will launch in succession.

In short, there is no downside to registering your brand’s most valuable marks in the TMCH – even if only one mark is registered.  The base price for registration in the TMCH is $150 for a one-year registration; $435 for a three-year registration; and $725 for a five-year registration.  Brand owners interested in registering a large number of trademarks should strategize about which marks to register in an effort to keep costs down. 

Brand owners should begin by assessing their global trademark portfolios to identify marks for submission to the TMCH and then gather documentation to support the TMCH submissions (e.g., copies of trademark registrations or equivalent documentation and proof of use for each trademark).  We recommend prioritizing your potential submissions into tiers based on, among other factors:

• Importance in the marketplace
• Geographic reach
• Likelihood of infringement
• Potential impact of infringement
• Longevity of mark

For additional information, please contact Tony Onorato (212.506.3933 / tonorato@steptoe.com).