The Internet Corporation for Assigned Names and Numbers (ICANN), the body tasked with coordinating and preserving global Internet stability, is embarking on its largest expansion ever of the domain name system. Last week, on March 26, ICANN launched a global Trademark Clearinghouse (Clearinghouse) as part of its generic Top Level Domain (gTLD) program. The newly-formed Clearinghouse will dramatically change the landscape of our domain name system, creating thousands of new domain names in addition to those existing gTLDs (that is, the words that appear to the right of the "dot" in a domain name). Currently-available gTLDs that you may be familiar with include .com, .org, .biz, and .net, but ICANN has already received over a thousand applications for new gTLDs, such as .baby, .food, .law, and more.
1. Why Register With The Clearinghouse?
Registration with the Clearinghouse is not mandatory, but may provide trademark holders with additional safeguards against cybersquatting, counterfeiting and other types of infringement as new gTLDs go live. Registration with the Clearinghouse also provides trademark owners with access to two new services: the Sunrise Service and the Trademark Claims Service.
- The Sunrise Service
The Sunrise Service allows Clearinghouse registrants an opportunity to register domain names for their trademarks before a new gTLD launches to the general public. During these Sunrise periods, trademark holders who have registered a trademark with the Clearinghouse will have at least 30 days before names are generally available to the public in which to register their mark(s) with the new gTLD. These Sunrise periods occur on a rolling basis as new gTLDs are introduced.
- The Trademark Claims Service
The Trademark Claims Service follows the Sunrise period, and runs for a period of at least 90 days after a new gTLD opens for general registration. During this period, if a third party attempts to register a domain name that is identical to a trademark registered with the Clearinghouse, that third party will receive a warning notification with the registered trademark information. If, after receiving the notice, the third party registers the disputed domain name, the Clearinghouse registrant will receive notice that someone has registered a domain name that is identical to his Clearinghouse trademark record. The notice to third parties serves as actual notice of possible infringement, which may be used as evidence of that party’s bad faith in registering the domain name in any resultant litigation.
2. Who May Seek Clearinghouse Protection?
Four types of word marks are eligible for inclusion in the Clearinghouse:
- nationally or regionally (that is, multi-nationally, such as CTM registrations) registered word marks from all jurisdictions;
- word marks that have been validated through a court of law or other judicial proceeding;
- word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; and
- other marks that constitute intellectual property.