New generic top level domain names (gTLDs)

At present, there are fewer than 25 generic top level domain (gTLDs) names such as .com, .net and .org. However this number is expected to increase dramatically to over 1000 new gTLDS such as .ads, .bank, .jewellery, .shop, .hotel and many more.

The new domain name spaces create a breeding ground for cyber squatters and are a potential nightmare for trade mark holders. For this reason the Internet Corporation for Assigned Names and Numbers (ICANN) has created a trade mark clearing system known as the Trademark Clearinghouse (TMCH).

Trademark clearinghouse (TMCH)

The TMCH is a global, centralised trade mark database, devised to protect brands and trade mark holders’ rights as part of the new gTLD programme. Trade mark holders can register their trade marks with the TMCH. Registration of trade marks is not mandatory, but offers two essential benefits.

These benefits arise from the fact that all new domain name registries will be required to make use of the TMCH to support its Sunrise Period and Trade Mark Claims Service.

Sunrise period

All new domain registries will be required to launch a Sunrise Period which allows trade mark holders to register domain names corresponding to their marks before names are generally available to the public. New registries are required to offer a Sunrise Period of at least 30 days.

If a trade mark holder registers its trade mark with the TMCH, it will be able to use that active registration for all new domain names during the Sunrise Period. Furthermore, if a third party applies to register a mark which is an Identical Match (discussed below) to the registered trade mark, the registry is required to notify the trade mark holder of the application.

Trade mark claims period

The Sunrise Period mentioned above is followed by the mandatory trade mark claims period which must last for a minimum period of 60 days from the start of the general registration. During the trade mark claims period, anyone attempting to register a domain that matches a mark that is registered in the TMCH, will receive a notification from the registry displaying the relevant trade mark information.

If after being notified, the third party goes ahead with the registration of the domain name, the registry/TMCH will send a notice to the trade mark holder advising it of the registration.

Trade Marks Eligible for Registration With The TMCH

There are four types of marks that are eligible for registration with the TMCH:

  1. nationally or regionally registered word marks from all jurisdictions;
  2. word marks that have been validated through a court of law or other judicial proceedings;
  3. word marks protected by a statute or treaty in effect at the time the mark is submitted to the TMCH for registration; and
  4. other marks that constitute intellectual property. These may be recorded in the TMCH by arrangement with a domain name registry.

Trade Marks Not Eligible For Registration With The TMCH

The following trade marks are not eligible for registration with the TMCH:

  1. trade marks that are the subject of an application for registration but not yet registered;
  2. trade marks that are the subject of trade mark applications made in terms of the Madrid system, unless the underling basic registration has national effect;
  3. trade marks registered by a city, state, province, or sub-national region;
  4. registered trade marks that were subject to successful invalidation, cancellation, oppo­sition or rectification proceedings;
  5. registered trade marks that include a top level extension, for example, trade marks such as “icann.org” or “.icann”
  6. any registered trade mark starting with or containing a dot (.) (e.g., the trade mark “deloitte.”; and
  7. any registered trade mark that does not contain any letters, words, numerals or Domain Name System-valid characters.

Requirements For Registration:

An applicant (the trade mark holder or its agent) is required to submit an eligible trade mark for registration, together with details of the trade mark holder and of the trade mark. If the trade mark registration is going to be used during the Sunrise Period, the trade mark holder is required to submit proof of use of the trade mark, such as labels, advertisements, samples of the products, etc.

Scope Of Protection Of Trade Marks

The trade marks that are registered with the TMCH are protected in terms of a set of matching rules. As a general rule, only identical matches of the trade mark are protected. This means that the domain name must be an identical match to the registered trade mark to qualify for the trade mark claims and sunrise services. However if special characters are incorporated in a trade mark that can not be represented in a domain name the scope of the protection would appear to be slightly wider. The easiest way to explain the scope of the protection is by way of example. 

Click here to see table.

The greater the number of special characters in the trade mark, the greater the number of variations that become eligible for protection. However the TMCH allows trade mark holders to protect a maximum of 10 domain names per registered trade mark. If the trade mark holder wishes to protect a greater number of variations, it is required to pay additional fees.

Duration of Registration

A trade mark can be registered for a one-year, three-year or five-year period. A one-year registration will require the renewal of the record. When recording a trade mark for a three-year or five-year period the trademark record will be automatically renewed. This minimises the chance of missing out on a Sunrise Period because a trade mark was pending renewal.

In a Nutshell

Registration with the TMCH will not prevent trade mark infringement or put an end to cyber-squatting. However, it provides a mechanism or network which makes cyber-squatting preventable to an extent and administratively easier to manage.

Whilst the system does not guarantee a trade mark holder that a corresponding domain will be allocated to it in all of the new spaces, it provides a mechanism where Sunrise Periods are more accessible to trade mark holders. Furthermore, the trade mark claims services are intended to ensure that trade mark holders are alerted to potential cyber-squatters as early as possible.

In conclusion, whilst the TMCH is not the answer to cyber-squatting and brand abuse, it will assist trade mark holders in fighting off potential cyber-squatting, in what is to become a vast domain space.

Registration with the TMCH officially opened on 26 March 2013. We are able to assist all trade mark holders who wish to register with the TMCH.