The Internet Corporation for Assigned Names and Numbers (ICANN) is beginning to launch new generic top level domain names (e.g., .store, .brand, .computer) and the first batch is set to go live by the end of this month. In connection with this launch, ICANN is offering two new services to trademark owners through the Trademark Clearing House (TCH). Generally, these services allow a trademark owner to register a second level domain name that contains their trademark before others can even apply for the domain name, and provide notice of trademark owners’ rights to any applicants who try to register a domain name that incorporates their trademark. A trademark owner must register their trademark with the TCH to receive these services and pay a minor registration fee. Please see below for additional information and consult with your Latham attorney about registering a trademark with the TCH if interested.
Historically, ICANN has limited the number of generic top-level domains to only a handful, such as .com, .net, .biz, .org, etc. However, ICANN recently decided to allow registration of practically any word as a top-level domain (e.g., .brand, .store, .money, .fund). While top-level domains are rather expensive to register and require technical expertise to administer (and hence will likely not be used to directly infringe a trademark), they open up the possibility for infringing second level domain names (e.g., <YourCompany.store>, <YourCompany.computers>, <YourCompany.brand>).
To help trademark owners protect themselves against potentially infringing second level domain names, ICANN is offering two services through the TCH. Specifically, the TCH gives trademark owners a chance to register a second level domain name that includes their registered marks before others have a chance to do so. In addition, trademark owners would receive a notice when a third party applies for a potentially infringing domain name, and TCH would send a notice to such an applicant to alert them to the trademark owners’ rights. Each of these services is described in more detail below.
The TCH began accepting applications to register trademarks on March 26, 2013, and ICANN plans to launch the first wave of generic top-level domain names on or around April 26, 2013. Trademark owners should promptly consider applying to register their trademarks.
The TCH’s basic fees to register a trademark are as follows: US$150 (one year registration); US$435 (three years); and US$725 (five years). The TCH will allow owners to annually renew their registrations.
Services Offered by the TCH
The Sunrise Services are intended to protect trademark owners from a “race to registration” by providing a 30-day head start in registering their marks as part of a second level domain name over other, would-be applicants when a new generic top level domain name is about to launch. For example, when the .store generic top level domain name is about to be launched, companies with a TCH registration would have a 30-day period to register <YourCompany.store> before any other applicant could apply for this domain name. ICANN will post updates (at http://newgtlds.icann.org/en/) when particular registries will open their Sunrise Periods for generic top-level domain names that are about to be launched.
As for the Claims Service, it will notify applicants of the rights of registered trademark owners when the applicant tries to register a second level domain name that is “identical” (a term of some ambiguity, as discussed below) to the registered trademark. This notification will not block the application, but it does put the applicant on actual notice of the trademark owner’s rights, which may (depending on the jurisdiction) constitute evidence of bad faith in any litigation that the trademark owner may later bring against that applicant. If the application eventually matures into a domain name registration, trademark owners would then receive a notification that the domain name has registered and would have the traditional options to combat this infringing domain name (e.g., a UDRP complaint, a court action, etc.).
This system does have some limitations. For instance, the TCH is not entirely clear how closely a domain name must match a trademark to trigger its services. For example, the TCH states that “if the Trademark Holder’s trademark is AB, then the domain name label that is applicable must be AB for it to be deemed an Identical Match. If the Trademark Holder’s Trademark label is èé, than the identical label is èé and not ee. In addition, a domain name containing a plural version of the mark is not considered to be an Identical Match that would trigger a notice.” However, the TCH also states that “if “DealSafe” is registered with the TCH, then a notice would issue for any domain name that contains “DEAL,” “SAFE” or “SafeDeal.” As these statements are somewhat contradictory, it is hard to specifically identify how helpful the notification service will ultimately be.
Registering with the TCH does not guarantee that a company will receive all second level domain names that contain its trademarks as others may have competing or superior rights in some parts of the world. The TCH does not undertake to resolve such disputes and it will only resolve disputes regarding allegedly incorrect rejections or acceptances of applications, and attacks against an existing TCH registration on the grounds that it is no longer valid based on new information. The TCH also does not provide any "blocking" mechanism for trademark holders in connection with the new top-level domain names, unlike the recent launch of the XXX domain.
The TCH may provide some helpful services to trademark owners, but it may not be for everyone. Some trademark owners may own a large portfolio of marks that would be costly to register/maintain, or may have marks that are at lower risk of domain name infringement. It may be worth exploring further with your trademark attorney whether it makes sense for you to register your marks with the TCH.
