1. What it is?

Starting next autumn, the Internet Corporation for Assigned Names and Numbers (ICANN) will progressively launch thousands of new domain name extensions.

These new personalized extensions such as .shop, .baby, .paris, .sport will most certainly be met with great success and numerous new cases of cyber squatting can be expected.

ICANN has put in place a mechanism for protecting the rights of trademark owners by creating a system of monitoring and recording priority.

Thus, as of 26 March 2013, trademark owners will have the possibility to register their trademarks in a global database called the “Trademark Clearing House” (TCH).

2. Why register?

The advantages of registration with the TCH for trademark owners are two-fold:

  • Enjoy priority registration in new extensions from the time of opening (Sunrise Period)

Thus, the new extensions will be granted by priority to trademarks registered in the TCH for a period of 30 days starting from the opening of the extension in question.

  • A system of monitoring and fast resolution of cases of cyber squatting (Trademark Claim)  

For 60 days following the opening of a new extension, all third parties seeking the reservation of a domain name reproducing a trademark already registered in the TCH will immediately be informed, thus giving the possibility of abandoning a registration that could be fraudulent.

Likewise, the trademark owners registered in the Trademark Clearing House will be informed of applications for registration of a domain name identical to their trademarks and will be able to oppose them using a simplified procedure for settlement of disputes called Uniform Rapid Suspension (URS).

It is important for companies to promptly identify the trademarks and the personalised extensions which have a strategic interest for them in order to benefit from a priority registration as of the launch of each new extension and to use the URS procedure to fight cyber squatting.

3. What are the registration procedures?

In addition to the payment of taxes, the registration of trademarks with the Trademark Clearing House must meet the requirement of substance and form set up by ICANN.