There is about to be an explosion in new generic top-level domain names (‘gTLD’) beyond .com, .org, .edu etc. Commencing in April 2013, ICANN will be considering over 1900 new gTLDs applications such as .shop, .wine, .hotel, .bank, .shopping, .buy, .news, .sale, .blog, .secure, .app, .sydney, .sucks, .reviews.

To provide some protection for trade mark owners, ICANN has created the Trade Mark Clearinghouse which is open from 27 March 2013. This alert describes how the Clearinghouse will work, what protections it provides and recommends that you use it to protect your key brands.

The Clearinghouse will act as a single centralised database containing authorised and verified trade mark information which aims to provide brand/trade mark owners with a facility to protect their rights online. Fees are approximately USD$150 per mark per year.

Why would I register my trade marks in the Clearinghouse?

Registering a trade mark enables brand owners to access the “Sunrise Service”. After a new gTLD commences (eg .wine, .bank), for a period before second level domain registrations are offered to the public (usually 30 days), a brand owner can secure second level domain names (ie, [yourbrand].wine) which correspond exactly to their trade marks, thus avoiding the risk of domain-squatting or rogue registrations by unauthorised third parties.

During the Sunrise period and for at least 60 days following, applicants for second level domain names will be notified if their requested domain name is an exact match to a trade mark recorded in the Clearinghouse (Trade Mark Claims Service). This will allow the applicant to seek to register another domain name rather than risk a dispute with the brand owner. If the applicant proceeds with the registration, the brand owner will be notified. This represents a big improvement for brand owners, allowing them to take action against registrants immediately rather than discovering the registration only after potentially damaging websites have been published.

Brand owners wishing to register their nationally registered trade mark will need to submit certain information to the Clearinghouse such as: name of the registered trade mark; registration number and date; jurisdiction (national/multi-national); description of the goods and services goods and services; status and contact details of the trade mark holder. Importantly, brand owners wishing to opt in to the sunrise services will also be required to submit a proof of use, either in form of signed declaration or a sample of proof of use.

What are the limitations?

While the Clearinghouse is a positive step in the fight against domain-squatting, the Clearinghouse/Trade Mark Claims Service does have some limitations:

  • Exact matching - notices to the brand owner will only be generated if the domain name is an exact textual match to the mark registered with the Clearinghouse. Plurals, deliberate typos, and a [trade mark]+word will not be captured as an ‘exact’ match and the brand owner will not receive notice of the registration.
  • Notification period - new gTLD registry operators are only required to provide notices for the first 60 days (possibly to be increased to 90 days) that second level domain name registration under a gTLD is open for general registration. After these 60 days, notices are not required to be issued.
  • Not a rights protection mechanism. The Clearinghouse and the Trade Mark Claims Service does not create any legal rights nor is it a bar to a potential registrant from registering a second level domain name. They provide advance notice to a brand owner so it can take appropriate action against the registrant, such as initiating the new Uniform Rapid Suspension (‘URS’) system (which provides for ‘freezing’ the disputed domain name, pending resolution) or Post Delegation Dispute Resolution Procedures. These new rights protection mechanisms are intended to complement the existing Uniform Domain Name Dispute Resolution Policy (‘UDRP’).

Should I consider registering my trade marks?

While the Clearinghouse is not a rights protection mechanism, it is an opportunity for brand owners to gain access to the pre-registration periods for each new gTLD and to receive notice of potentially infringing domain name registrations during the launch period of each new gTLD.

Whether it makes strategic sense for you to participate in the Clearinghouse depends on your strategies and objectives. For example, if you:

  • are a strong consumer-facing brand that could be (and has been) a popular target of domain-squatting;
  • are part of an industry or market (e.g. telcos or hotels) that is particularly sensitive to reputation-damaging domain names (e.g. [yourbrand].sucks [yourbrand].fail);
  • have a key brand which is identical to brands of other unrelated traders in other countries;
  • have a digital strategy of blocking others from using your trade marks online; or
  • have an interest in gaining first rights to register a second level domain name under a new gTLD, as either a proactive or defensive blocking strategy,

then submission of your key trade marks to the Clearinghouse is a cost effective ‘first line of defence’.

While there is no time limit for submission of trade marks in the Clearinghouse, in order to obtain sunrise services, the trade mark will need to be submitted prior to the launch of the relevant gTLD in which you wish to pre-register a domain name.