With the launch of the Trademarks Clearinghouse, brand owners can now stake their territory In the brave new world of expanded generic top level domain names (“gTLD’s”). The Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit organization that manages and coordinates the system of domain names and IP addresses used on the internet, has put into operation what it calls “the most important rights protection mechanism built into ICANN’s new gTLD program”.

The Trademarks Clearinghouse (“Clearinghouse”), which is operated by Deloitte and IBM, is a centralized database of information submitted by brand owners that will be used by the ultimate operators of the new gTLD’s as part of their process of trying to avoid the infringement of trademark rights through the domain names applied for under their gTLD. Through the Clearinghouse, ICANN is attempting to address brand owners’ concerns about the increased risk of cybersquatting that comes with the introduction of the new gTLD’s.

Key Point for Brand Owners

With many new gTLD’s likely to be operating, the Clearinghouse offers brand owners a high level way of protecting their rights instead of having to take action (through domain name dispute resolution arbitrations or legal proceedings) regarding individual domain names.

In light of the pending release of the first new gTLD’s (expected later this year), brand owners should analyze their trademark holdings and determine if they would benefit from the trademark rights protection mechanisms that the Clearinghouse offers. While the Clearinghouse is not a substitute for other protection mechanisms, such as domain name monitoring services, it may be an important tool for brand owners in protecting their marks.

How the Trademarks Clearinghouse Will Work

The Clearinghouse is intended to be an inexpensive central repository for trademark data. It will authenticate and store the trademark data and disseminate it to all new gTLD registries for use in connection with the two mandatory trademark rights protection mechanisms that all gTLD registrars must provide, as follows.

  • Sunrise Services: The Sunrise Services will ensure that brand owners who have registered their trademark with the Clearinghouse are given an advance opportunity to register a domain name incorporating their trademark before the opportunity to register domain names under a gTLD is open to the general public.
  • Trademarks Claims Services: The Trademarks Claims Services will ensure that anyone who applies to register a domain name that matches a trademark registered with the Clearinghouse will receive a notification of the trademark holders rights. To proceed, the applicant must warrant that the registration and use of the domain name is not infringing. If the domain name is registered, the trademark holder will be notified.

Only brand owners who submit their trademark information to the Clearinghouse will get the benefit of these services.

Registration with the Trademarks Clearinghouse

To register with the Clearinghouse, the owner of an issued trademark must submit:

  • a copy of the trademark registration (or other documentation showing ownership information, registration number and jurisdiction where issued);
  • evidence of the use of the trademark in connection with the offering for sale of goods or services prior to the submission to the Clearinghouse (including a signed declaration and a single specimen of how the mark is used);
  • an affidavit or other sworn statement declaring that the information is true and has not been submitted for an improper purpose and agreeing to keep the information provided current (including advising of transfer of ownership or abandonment of the trademark, failing which penalties may be imposed); and
  • the required filing fee.

For a trademark validated through a court or other judicial proceeding, the trademark owner must submit filed court documents evidencing this, and for a trademark protected by statute or treaty, a copy of the relevant portion of these must be submitted.

The basic fee structure for submissions to the Clearinghouse is US$150 for a 1-year registration, US$435 for a 3-year registration and US$725 for a 5-year registration. Volume discounts using a system of “Status Points” earned by registering or renewing trademarks in the Clearinghouse are also available (for details see: http://trademark-clearinghouse.com/content/trademark-clearinghouse-fees).

ICANN received 1,930 applications for new gTLD’s for domains (including many applications in non-English characters) ranging from types of consumer products and services (.car, .movie, .hotel),to industry or social sectors (.bank, .church, .career), to geographic names (.nyc, .berlin), to brands (.chanel, .nike, .apple) (a complete list of the gTLD’s applied for can be found at: http://newgtlds.icann.org/en/). These applications are now under review by ICANN to determine if the applicants meet the necessary criteria (including technical and financial capacity).

There are currently no set deadlines by which any of the new gTLD’s will be launched, as each application to operate a new gTLD must navigate its way through the evaluation process. However, ICANN projects that the first new gTLD registries should be up and running later this year. Brand owners who want to take advantage of the preventive protection offered by the Clearinghouse would therefore do well to register their information as soon as possible.