Introduction

As all brand owners know, protecting your name and trade marks online is becoming increasing complicated as new internet domains are opened up on a regular basis, including the new generic Top-Level Domains (gTLDs, that is, as a .brand domain). Because of the proliferation of domains available, even the most well resourced brand owners cannot protect their key brands across all domains through prophylactic domain name registrations. The long discussed Trademark Clearinghouse (Clearinghouse) is intended to assist brand owners to prevent third parties from registering domain names which incorporate their registered trade marks. The Clearinghouse is now set to launch and will begin accepting registrations on 26 March 2013.

What is the Trademark Clearinghouse?

The Clearinghouse has been established by ICANN (Internet Corporation for Assigned Name and Numbers, the global coordinator of internet domains and domain names). It will be a centralised database of 'verified' or authenticated trade marks for the purposes of providing notice where a newly applied for domain name conflicts with a trade mark that has been listed in the Clearinghouse.

From 26 March 2013 brand owners will be able to register their trade marks with the Clearinghouse. This in turn will ensure that the registered brand owners are notified of any new domain names sought in certain domains which consist of their 'verified' trade marks.

It will be a requirement to have your trade mark registered in the Clearinghouse in order to apply for your brand as a gTLD during the coming gTLD sunrise period. For example, to apply for '.nortonrose' as a gTLD it will first be necessary to list Norton Rose as a verified trade mark in the Clearinghouse.

Requirements for registration in the Trademark Clearinghouse

The following marks are eligible for inclusion in the Clearinghouse:

  1. Nationally or regionally registered word marks from all jurisdictions (for example Australian registered trade marks);
  2. Word marks that have been validated through a court of law or other judicial proceeding (for example, trade marks which have successfully been protected in Australia through the Courts by passing off or misleading and deceptive conduct proceedings);
  3. Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion (for example, Government marks); or
  4. Other marks that constitute intellectual property may be recorded in the Clearinghouse by arrangement with a registry (this could include the text elements in a protected logo mark).

How will it work?

The exact nature of the workings of Clearinghouse are unclear. Listing your trade mark in the Clearinghouse will create a defined list of domain names associated with your mark, according to a defined set of automatically generated matching rules. The matching rules are unknown. Therefore, the extent of the notice that will be provided by listing your mark in the Clearinghouse, and what variations of your mark will be covered, will only be known once you list your brand with the Clearinghouse.

A maximum of 10 domain name variations corresponding to one trade mark are included in the initial cost of verification by the Clearinghouse. If there are more than 10 domain name variations, generated by the matching rules, corresponding to the trade mark you can pay an extra fee to have these additional variations covered by the notice system.

The Clearinghouse is a repository of data only, and as with the accepted co-existence of marks both nationally (for different goods) and internationally (on different Trade Mark Registers), trade marks from many jurisdictions can co-exist in the Clearinghouse. The Clearinghouse will not make determinations on the substance or scope of rights held by a particular party. It will purely operate to provide notice where it appears a conflict exists between a listed trade mark and an applied for domain name.

This notice will be sent to both the trade mark holder (or its listed agent), the relevant domain name Registrar for the newly applied for domain name and the domain name applicants. This should allow the trade mark rights holder to more readily bring the new domain name to a suitable domain name dispute resolution proceeding. This notice will be achieved for a relatively modest fee.

What should brand owners do now?

If you find the value of your brands and trade marks are being constantly undermined by third party domain name registrations across a range of domains, the Clearinghouse could be a useful tool in the online protection of your brands. It will give you early notice of potentially conflicting domain names.

This could be a useful element in your brand strategy sitting alongside more traditional trade mark watching services which monitor your brand against third party trade mark applications for the same or similar trade marks.