We have previously reported on the 1930 new gTLD proposals which were submitted to ICANN in June 2012. Two important deadlines in this process occur this month:

  • 13 March 2013 – End of the New gTLD Objection Filing Period
  • 26 March 2013 – Trade Mark Clearinghouse is scheduled to open for business.

What brand owners need to do:

  • Ensure there are no gTLD applications of concern prior to 13 March 2013; and
  • Begin preparations for lodging trade mark claims in the Clearinghouse.

13 March 2013 – End of the new gTLD Objection Filing period

This is the last day brand owners can object to applications for a new gTLD. There are currently 1,916 applications being considered. Brand owners should review this list for gTLDs which may violate their legal rights, such as its trade mark rights (both registered and unregistered). A gTLD is considered to violate a brand owner's trade mark rights if it:

  • takes unfair advantage of the distinctive character or the reputation of the opponent's registered or unregistered trade mark or service mark; or
  • unjustifiably impairs the distinctive character or the reputation of the opponent’s mark; or
  • otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the opponent’s mark..

There have been few legal rights objections lodged and most clients have elected to protect their brands through defensive measures such as the Trade Mark Clearinghouse.

26 March 2013 – Trade Mark Clearinghouse is scheduled to open for business

This is the intended date for the launch of the Trade Mark Clearinghouse. The Clearinghouse will be a central trade mark repository whereby owners of registered brands can authenticate their marks in order to better monitor and police use of their marks as second level domain names in new gTLDs. The benefit of authenticating trade marks with the Clearinghouse include:

  • Trade mark reservation: Each time a new gTLD goes live, its operator is obliged to offer a Sunrise period of at least 30 days during which brand owners may request registration of their authenticated trade marks as domain names.
  • Notice of conflicting domain names: Owners of authenticated trade marks will be notified if a third party seeks Sunrise registration for a domain name that is identical to the mark.
  • Domain name complaints: The Clearinghouse provides brand owners with a convenient way of establishing their trade mark rights in any future domain name complaints.

The Clearinghouse will remain open throughout the delegation of new gTLDs which, on current estimates, could be as early as June 2013, and possibly stretch into early 2015. The Clearinghouse will be operated by Deloitte Enterprise Risk Services, who has published a Fee Structure of US$150 for a 1 year listing, US$435 for a 3 year listing and US$725 for a 5 year listing. Submission may be made either through an Agent such as DCC or direct via the Trade Mark Clearinghouse website.