The Trademark Clearinghouse will begin operating on 26 March 2013 and is a tool to assist brand owners protect their brands when a raft of new top level domain name extensions known as generic top-level domains (gTLDs) are introduced later this year.
Following a decision by ICANN to introduce new top level extensions (new gTLDs), ICANN received nearly 2000 applications for new top level extensions (new GTLDS) which can be viewed here. ICANN expects to approve the first new gTLDs on 23 April 2013.
The Trademark Clearinghouse is a single database of authenticated trade marks. Registration of a trade mark in the Clearinghouse will enable a trade mark owner to utilise one or both of the following procedures but does not allow trade mark owners to block infringing domain names:
The Sunrise Period is an initial period of at least 30 days before domain names in a new extension are offered to the general public. During the Sunrise Period, verified trade mark owners (i.e. trade marks registered in the Clearinghouse) can apply for domain name(s) matching their trade mark(s) before the domain names are made available to the public.
On 20 March ICANN indicated that it will implement a number of aspects of the Strawman Proposal/Solution which will mean that Registrars must give a 30 day warning, pre-sunrise period, to promote public awareness and participation in sunrise registration.
Trademark Claims Service
The Trademark Claims Service follows the Sunrise Period and is a notification service to notify both trade mark owners and domain name applicants if an application is filed for a domain name corresponding to a trade mark in the Clearinghouse during the Claims Period (at or shortly after the launch of a new extension) in any of the new gTLDs (new extensions). ICANN have recently indicated the Claims Period will be the first 90 days following the launch of a new extension.
The Trademark Claims Service operates as follows:
If an application is filed for a domain name that matches a trademark term in the Clearinghouse the domain name applicant will be sent a warning notice advising the applicant of the rights of the trade mark owner. The domain name applicant can then choose whether to proceed with the domain name registration. If the domain name applicant decides to proceed with the domain name registration a notification is sent to the trade mark owner advising them of the domain name registration so they can take appropriate action if they would like to.
On 20 March ICANN indicated that it will implement a number of aspects of the Strawman Proposal/Solution including the following:
- The Claims period for Trademark Clearinghouse registration is the first 90 days following launch (i.e. the notification to trade marks owners and domain name applicants will only take place for 90 days after the launch of a new extension).
- Trademark owners can register up to 50 labels (abused variations) provided the string has been part of a successful UDRP Complaint (e.g. where the name has previously been found to be an abusive domain name registration under the UDRP).
The Clearinghouse will also assist brand owners establish their trade mark rights, should they wish to take action under the ICANN domain name dispute resolution policies specifically directed to the new gTLDs (e.g. Uniform Rapid Suspension or URS Policy).
There was also a proposal to implement a mechanism known as Limited Preventative Registrations (LPRs) for trade mark owners to prevent second-level registration of domain names matching their trade mark(s) but this proposal was considered to be a new program which will require further policy consideration (e.g. policy discussion with stakeholders).
Deloitte Enterprise Risk Services will serve as the trademark validation provider for the Clearinghouse. The fee structure for the Clearinghouse will be US$150 for a 1 year listing, US$435 for a 3 year listing and US$725 for a 5 year listing but there are likely to be additional charges if a third party (e.g. Registrar) is engaged to register trade mark(s) in the Clearinghouse.
What Brand Owners Need To Do?
Review the list of new gTLDs (see https://gtldresult.icann.org/application-result/applicationstatus) to determine which, if any, of the proposed new extensions (gTLDs) are of particular relevance
Consider registering your trade mark(s) in the Clearinghouse to take advantage of the Sunrise Service and/or Trademark Claims Service.