The Trademark Clearinghouse (“TMCH”) is a newly-launched rights protection mechanism for brand owners to protect their trade-marks. The TMCH is part of the Internet Corporation for Assigned Names and Numbers’ (ICANN) program for handling new generic top-level domain (gTLD) registrations.
The new gTLD program
A gTLD is simply a domain name extension - the last few letters of a URL. Common gTLDs are .com, .net and .org. Prior to the new gTLD program, launched in 2011, there were just over 20 gTLDs in use.
As a result of the new program, many more gTLDs are being approved by ICANN, such that there could be hundreds if not thousands of new gTLDs in the coming years. For example, a new gTLD could be approved for .bullhousser, or .lawfirm. Under the program, new gTLDs can also be in any language and can be in scripts such as Arabic or Chinese.
The gTLD program allows for applications to be made for new gTLDs for an initial fee of $185,000, with a recurring annual fee of $25,000. Given the substantial cost associated with a new gTLD registration, it appears unlikely that cybersquatters will be looking to turn the gTLD program to their advantage. In the same vein, registrations are likely to be sought only by larger organizations who believe that registration is likely to provide a significant benefit.
With the launch of the new gTLD program, ICANN is also developing an inexpensive and quick dispute resolution procedure known as the Uniform Rapid Suspension (URS) service. Although similar to the existing Uniform Domain Name Dispute Resolution Policy (UDRP) that is currently available to trade-mark owners who need to take action against cybersquatters, the URS is designed to allow for faster takedown of domain names at a fraction of the cost if the infringement is clear-cut. However, the URS can only be used in respect of domain names within the new gTLD program.
Under the TMCH, trade-mark owners can pay a fee and submit their trade-marks to a centralized database for protection.
It is worth noting that the only trade-marks that will be accepted into the TMCH database are those trade-marks which are registered, court-validated, or otherwise protected under statute or treaty (for example, official marks). This is yet another reason, among many others, to protect your trade-mark through registration.
There are two aspects to TMCH protection: a Sunrise Service, and a Trademark Claims Service.
The Sunrise Service can be used by trade-mark owners to reserve the right to register domain names in any new gTLD that match their trade-marks, beginning 30 days before those domains are made available to the general public. All new gTLDs will be subject to a sunrise period. In order to participate in the Sunrise Service, however, a trade-mark owner must have submitted a validated entry for its trade-mark to the TMCH. It is worth noting that the Sunrise Service applies only to domain names that are identical to a trade-mark in the centralized database. Accordingly, it is still important to use a private “watch service” to monitor the use of confusingly similar trade-marks.
The Trademark Claims Service is offered for a 90 day period after the sunrise period, i.e. for 90 days after the public launch of a new gTLD. As with the Sunrise Service, all new gTLDs will be subject to the Trademark Claims Service. During the 90 days, a notice will be issued to applicants for domain names that match a trade-mark entered in the TMCH. If the applicant chooses to proceed to registration notwithstanding the notice, then the trade-mark owner will be notified of the newly registered domain name, at which time it can choose to take action against the applicant.
The costs associated with TMCH protection appear to be relatively reasonable. The cost of protecting each trade-mark in the TMCH is $150 USD for 1 year, $435 USD for 3 years, and $725 USD for 5 years. Payments are required to be made using a credit card, with a limit of 10 trade-marks per credit card. Trade-mark owners that set up a prepayment account with the TMCH may qualify for a volume discount that will lower the price to as low as $95 USD per trade-mark.
The TMCH launched on March 26, 2013. Given the relatively reasonable cost, there do not appear to be significant drawbacks to participating. The Sunrise Service allows trade-mark owners to pre-emptively register a domain name in any new gTLD before the general public, while the Trademark Claims Service will notify trade-mark owners of potentially infringing domain name registrations once they are registered. Furthermore, where notice is given to an applicant under the Trademark Claims Service, it will be difficult for such applicants to later argue that they had no notice of another party’s trade-mark.