For the last 6 years, the Internet Corporation for Assigned Names and Numbers (ICANN) has been developing a program with the view to expanding the current domain name system. This new generic top-level domain (gTLD) program which is due to launch in the second half of 2013, has been created to increase competition and choice in the domain name space, by allowing domain names to be registered which do not relate to a specific geographic location or country (e.g. .co.uk), but to specific keywords (e.g. .music) or even specific brands (e.g. .amazon).

By expanding the domain name space, however, trade mark infringers and domain name squatters have more opportunity to file abusive registrations and infringe trade mark rights. In an attempt to protect the rights of trade mark owners online, ICANN has introduced the Trademark Clearinghouse (TMCH). The TMCH serves as a central repository of trade mark information where trade mark owners are allowed to submit their trade mark information into the centralised database before and during the launch of the new gTLDs. The TMCH’s database has been made available for recordation on 26 March 2013.

The primary functions of the TMCH are to:

  • Authenticate contact information and verify trade mark records; and
  • Store trade mark records in their centralised database in order to provide information to the new gTLD registries to support the provision of Notifications of Registered Names.

There are significant benefits for trade mark owners in recording information about their trade marks on the TMCH’s centralised database:

  • Once your trade mark has been authenticated and verified by the TMCH, you have fulfilled the most important requirement for registering your trade mark as a corresponding domain name during the pre-registration period of the new gTLD system. This pre-registration period – called the “Sunrise Period” – is a period of 30 days allowing trade mark owners to register a gTLD before registration is available to the public. Trade mark owners can, therefore, take advantage of this pre-launch period to ensure that they secure the domain name that matches their brand. The Sunrise Period will be mandatory for all new gTLDs.
  • The Trademark Claims Service follows the Sunrise Period and is in essence a notification service whereby both domain name registrants as well as trade mark owners are notified of possible infringements. If an application is submitted for a new gTLD which matches a trade mark term recorded on TMCH’s centralised database, the Applicant will receive a notification from ICANN. If the Applicant decides to proceed with the registration for the gTLD, ICANN will notify the relevant trade mark owner in order to take appropriate action, should they wish to do so.

The fee payable to the TMCH for recording one trade mark registration on their centralised database is US$150 for a one year period, US$435 for three years and US$725 for five years. This fee includes the recordal of the trade mark registration plus linking up to 10 domain names per registration, although it is possible as an optional extra to select additional domain names if more than ten domain names are available according to the domain name matching rules.

Accordingly, the new gTLD system will enable you as a trade mark owner to obtain the domain name of your choice, however, by recording your trade mark information on the TMCH’s centralised database you can ensure that you have priority over the general public in securing registration for this domain name. Moreover, it will reduce the administrative burden of monitoring the filing of new gTLDs, while still being notified by ICANN of third parties potentially seeking to obtain an abusive domain name registration and infringing your registered trade marks.

The TMCH may, therefore, prove to be an essential tool to manage and protect your trade mark rights in this new era of top-level domains.