With the upcoming delegation of new generic Top Level Domains (gTLDs), trade mark owners should consider taking pre-emptive steps to prevent domain name squatters using their trade marks when registering domain names under any of the 1,000 new gTLDs expected later this year.

The recently launched Trade Mark Clearinghouse (TMCH) offers another means for protecting brands and valuable IP rights from infringement.

Background

In June 2011, ICANN, the body that manages the Internet’s domain name system, approved a major expansion of Internet naming protocols by allowing successful applicants to redefine the suffix attaching to the end of Internet domain names beyond the core generic suffixes such as .com, .net and .org. These new domain endings are known as the ‘new gTLDs’.

The Clearinghouse

On 26 March 2013, ICANN introduced the TMCH as a single global database of verified trade mark data, open to any holder of eligible trade marks. It allows trade mark owners to submit their trade mark data into one centralised database prior to and during the roll-out of the new gTLDs. The TMCH protects brands through the ‘Sunrise’ and ‘Claims’ services.

Sunrise Service

Under the Sunrise Service, owners of trade marks registered with the TMCH will be given an opportunity to register the domain name that matches their trade mark before anyone else.

New gTLD operators are required to offer a ‘sunrise’ period of at least 30 days, during which a trade mark owner can register their domain name before the gTLD operator makes domain names generally available to the public.

In order to avail of this service, trade mark owners must be able to provide “proof of use” of their trade mark. This consists of a declaration of use and a sample or example of the trade mark’s use.

Claims Service

This is a notification service required by ICANN for all new gTLDs. Owners of trade marks registered with the TMCH will, during the first 60 days of the launch of each new gTLD, be notified of any applicants seeking to register a domain name that is identical to their trade mark, as recorded on the TMCH database.

The service operates by sending a potential domain name registrant a warning letter if they attempt to register a domain name that is identical to a word mark registered in the TMCH. If the applicant proceeds with the registration, the TMCH will notify the affected trade mark owner. However, the gTLD is not obliged to block the registration so it will be up to the trade mark owner to take appropriate action in respect of the offending domain name.

Uniform Rapid Suspension (URS)  

The URS is one of the mechanisms to address trademark protection concerns in the new gTLD program. It is a rights protection mechanism expected to provide trade mark holders with a new, cost effective remedy in addition to those available under the Uniform Domain Name Dispute Resolution Policy (UDRP) and applicable law. The primary purpose of the URS is to provide for rapid suspension of domain names on trade mark infringement cases in which there is no genuine contestable issue as to the infringement and abuse that has taken place

Should I Register?

With the possibility of ICANN delegating up to 1,000 new gTLDs each year, and the risk that third parties may try to register your trade mark as a domain name, you should give serious consideration to registering your marks with the TMCH. While registration will not guarantee your trade marks will not be infringed under the new TLDs, it will give you a simple way to keep track of all new gTLDs and manage and protect your trade marks.

Registrations of trade marks with the TMCH can be for periods of one, three or five years. The basic registration fee is $150 per annum. Discounts apply depending on the number of registrations and the period of registration chosen.