What you need to know
ICANN, the body that administers the domain name system, is managing a process that may see the creation of nearly 1400 new gTLD domain name extensions. We estimate there may be in the region of 600 new open registries in this current phase, based on the answers that these registries published to specific questions required by ICANN. (Registries have not published their full policies, however, so this number is subject to change.)
It is important that mark holders protect their trade marks in light of the new gTLDs by making the most of the new measures that will be available including:
- The Trademark Clearinghouse (TMCH)
- Sunrise domain name applications
- Trademark Claims Services
What is the Trademark Clearinghouse?
The Trademark Clearinghouse (TMCH) is not a rights protection measure in itself. The TMCH will act as a central repository in which certain rights, predominantly registered trade marks, can be "deposited" and validated in a single place rather than validating each mark separately with each registry as each registry launches. The TMCH will initially be operated by Deloitte in conjunction with IBM. Mark holders will gain access to two important measures to assist them to protect their marks among domain names in the new domain name extensions by validating appropriate marks into the TMCH:
- Sunrise domain name applications
- Trade Mark Claims Services
Only eligible marks that are validated in the TMCH, with proof of use if necessary, will be eligible to: 1) make Sunrise applications to register a new domain names in the new extensions before any landrush; and 2) use the Trademark Claims Services to warn other applicants for a domain name that they are applying for a domain name that is an Identical Match to a mark in the TMCH and receive notice if such a domain name is registered.
TMCH: How much it will cost to validate marks into the Trademark Clearinghouse?
Deloitte's fee to validate a mark and enter it into the TMCH for one year will be in the region of US$150. We are well placed to assist mark holders to decide which of their marks should be validated. It is likely that it will be necessary for marks in the TMCH to be revalidated on an annual basis.
It is possible to validate a mark into the TMCH with or without proof of use of that mark. It is anticipated that Deloitte will not charge extra fees to also validate proof of use of the mark. However there are significant advantages of validating proof of use of the mark: only marks with validated proof of use will be able to make Sunrise applications for domain names that are considered an Identical Match to the validated mark before any registry opens for general availability. Holders of validated marks will be eligible to use and link each mark in the TMCH to ten sunrise registrations at no additional cost from the TMCH. (For example your-mark.extension1, your-mark.extension2 etc.) It is anticipated that the TMCH will charge a further fee of US$1 to use a validated mark for each Sunrise application that results in a registration after the initial ten registrations that the mark is used for.
TMCH: What is eligible to be validated into the Trademark Clearinghouse?
The criteria of what is eligible to be validated into the TMCH has not been finalised but currently includes the following four categories:
- Nationally or regionally registered word marks from all jurisdictions.
- Any word mark that has been validated through a court of law or other judicial proceeding.
- Any word mark protected by a statute or treaty in effect at the time the mark is submitted to the TMCH for inclusion.
- Other marks that constitute intellectual property.
Deloitte have made some indication that they may accept figurative and device marks. The definition of what may constitute other marks that constitute intellectual property is not defined further, but is likely to account for jurisdictions where registered company names attract certain rights. However, it will still be necessary for these rights to be capable of being represented in the domain name system, and therefore is likely to exclude patents and designs.
- Procedure for Sunrise domain name applications (requiring eligible mark validated into the TMCH and proof of use)
Every new domain extension must provide a mandatory Sunrise of at least 30 days in the pre-launch phase for the eligible holders of marks validated into the TMCH together with proof of use. Eligible mark holders will be able to apply in the Sunrise period to register domain names which are considered an Identical Match to the mark. To register a new gTLD domain name it will also be necessary to satisfy any additional eligibility requirement set by each new gTLD registry. Significantly what will constitute an Identical Match has yet to be finalised. This is significant as trade marks may contain characters than cannot be represented in domain names, for example the @ symbol, spaces or underscores.
- Procedure for Trademark Claims Services submissions (requiring mark validated into the TMCH but not proof of use)
The Trademark Claims Service will:
- provide notice to domain name applicants that they have applied for a domain name which is an Identical Match to a mark validated by the TMCH; and
- if the applicant opts to complete the registration of the domain, the TMCH will notify the mark holder that a domain name has been registered which is an Identical Match to the mark. This will operate for at least the first 60 days that general registration is available. Proof of use is not expected to be necessary to make use of the Trademark Claims, unlike Sunrise applications.
A selection of current possible new extensions in non-Latin scripts (Internationalised Domain Names [IDNs]) and their meaning is available here.
The current list of Geographic registries that mark holders should consider if these are significant to customers is available here.
Finally, a small list of registries which mark holders may have particular concerns about is available here. The Australian government representative on ICANN’s Government Advisory Committee (GAC representative in ICANN) identified specific concerns regarding .sucks, .wtf, .fail and .gripe on the basis that these extensions may require unnecessary defensive registrations.
A 'To Do' List
Brand holders should consider reviewing their portfolio to identify:
- which marks should be validated in the TCMH to obtain:
1.1 Sunrise registrations (likely to require proof of use of the mark in one country (even though it is registered in numerous jurisdictions); and
1.2 use of the Trademark Claims Services (likely not to require proof of use of the mark),
- consider adequate use of marks likely to be validated in the TMCH and used to submit Sunrise registrations.
Registration of appropriate trade marks play an increasingly important role in a brand holder's ability to manage its brands online.
