In the next few months, the Internet Corporation for Assigned Names and Numbers (ICANN) will significantly expand the number of generic top-level domains (gTLD). As part of the gTLD expansion process, ICANN launched the Trademark Clearinghouse (“Clearinghouse”) last week. The Clearinghouse is designed to provide trademark owners early registration opportunities in the new gTLDs, as well as notice regarding potentially infringing domain name applications. Although the Clearinghouse will not protect marks from all potential infringements in the new gTLDs, Alston & Bird encourages trademark owners to register their important trademarks with the Clearinghouse in order to take advantage of these early registration and notification benefits.

Why the Clearinghouse Is Needed

ICANN approved the introduction of new gTLDs in order to “increase competition and choice in the domain name space.” Top-level domains are the extensions at the end of a domain name, such as .com and .edu, as well as countryspecific extensions such as .us for the United States. At present, there are 22 generic top-level domains. Those numbers are set to increase significantly as ICANN is currently reviewing more than 1900 applications from prospective gTLD operators for new gTLDs. These gTLDs will fall into several categories, including:

  • brand names – such as .hersheys and .aarp
  • geographic locations – such as .amsterdam and .capetown
  • industries – such as .auto and .financial
  • generic words – such as .blog, .coupons and .cool

ICANN expects to begin approving new gTLDs for use and registration by May 2013. The full list of proposed gTLDs is available on ICANN’s website here.

There is both good news and bad news for trademark owners in ICANN’s plan to approve new gTLDs.

The good news – the evolving gTLD system gives brand owners and marketers significantly more Internet address choices, including gTLDs that are specific to the nature of their business.

The bad news – the increase in gTLDs will drastically increase the number of potentially infringing domain name registrations.

The Clearinghouse is intended to be a means of lessening the impact of the new gTLDs on trademark owners from an infringement standpoint. The Clearinghouse will serve as a centralized global repository for trademark data that will interface with every gTLD registry. The Clearinghouse will verify trademark data submitted by trademark holders and maintain a database of verified trademark records. Clearinghouse registrants will be eligible for priority, “sunrise” domain name registration periods and trademark claims services. Clearinghouse registration began on March 26. The website for the Clearinghouse is located at http://trademark-clearinghouse.com.

Clearinghouse Registration

The Clearinghouse accepts registration of the following marks:

  1. a registered trademark, which is a nationally or regionally (i.e., multi-nationally) registered mark on the principal or primary register in the mark’s jurisdiction;
  2. a mark that has been validated by a court of law, or other judicial proceeding, at the national level, such as unregistered (common law) marks and/or well-known marks; and
  3. marks protected by statutes or treaties (excluding statutes or treaties that are only applicable to a certain region, city or state); these marks may include, but are not limited to, geographical indications and designations of origin.

Certain marks are ineligible for Clearinghouse registration, including marks that include a top-level extension (e.g., ICANN.ORG), marks that contain a period (e.g., DELOITTE.), marks only registered in a U.S. state and marks that cannot be practically added to the database (such as design marks or marks that do not contain any letters, words, numerals or recognizable symbols).

To register national or regional trademarks, clearinghouse applicants will need to submit:

  • the name of the mark;
  • registration number;
  • registration date;
  • country/region of registration;
  • description of goods and/or services that corresponds to the goods and/or services for which the mark is protected, and corresponding international class(es);
  • status of the trademark holder (e.g., owner, licensee, assignee); and
  • the full name, business organization type (e.g., LLC or Inc.), address and contact information for the trademark holder.

To opt in to the sunrise registration periods (discussed below), the trademark holder must also submit a signed declaration of use and a single sample of proof of use of the mark. Registration for court-validated marks or for marks protected by statute or treaty requires similar information, but instead of registration information, the trademark holder should submit details pertaining to, and copies of, the relevant court order, statute or treaty. The Clearinghouse will verify the information provided by trademark holders and maintain a depository of trademark information for use by gTLD operators.

The Clearinghouse charges $145 to register one mark for one year, $435 for three years and $725 for five years. Volume discounts are available based upon a point system discussed on the following webpage: http://trademark-clearinghouse. com/content/new-fee-structure.

There is no deadline for registering a mark with the Clearinghouse; however, it is not clear how long the registration process will take. Accordingly, it is recommended that trademark owners start the process as early as possible to insure registration before the new gTLDs launch and to take advantage of the available sunrise registration periods discussed below.

Sunrise Registration – Priority Registration for Clearinghouse Registrants

As each new gTLD launches, there will be an initial “sunrise period” of at least 30 days during which Clearinghouse registrants can register domain names that match the mark(s) they have registered with the Clearinghouse before these domain names are made available to the public for registration. New gTLD operators will cross-check new domain name applications against the Clearinghouse database and notify trademark holders if another trademark holder is seeking a sunrise registration that matches a mark they have registered in the Clearinghouse. New gTLD operators are required to adopt a sunrise dispute resolution policy to resolve any disputes that arise during the sunrise registration period.

Trademark Claims Notification

After the conclusion of the sunrise period, new gTLD operators must provide trademark claims notification services for at least the first 60 days that the registration is open for general registration. During this period, if a party attempts to register a domain name that is an “Identical Match” to a trademark registered in the Clearinghouse, the gTLD operator must notify the domain name applicant of the trademark rights claimed in the relevant mark or marks. “Identical Match” is defined as consisting of the “complete and identical textual elements of the trademark,” with exceptions that account for spaces, hyphens or special characters that are included within a mark.

The applicant may proceed with registration of the domain name after receiving notice; however, to do so, the applicant must provide the gTLD operator with a statement warranting that he or she understands the notice, and, to the best of the applicant’s knowledge, the registration and use of the requested domain name will not infringe the trademark owner’s rights. If the applicant elects to proceed with registration of the domain name, the gTLD operator must then notify the trademark holder of the potentially infringing domain name registration.

Uniform Rapid Suspension (URS) Services – A New Shortcut Dispute Resolution Option

For domain name disputes involving registrations in the new gTLDs, the existing Uniform Domain Name Dispute Resolution Policy (UDRP) will be available. However, ICANN has also developed a complementary dispute resolution option, the Uniform Rapid Suspension (URS), which is designed to offer faster relief for a lower cost for “clear-cut cases of infringement.” The UDRP and URS share the same examination standards: (i) the registered domain name is identical or confusingly similar to a word mark; (ii) the registrant has no legitimate right or interest in the domain name; and (iii) the domain was registered and is being used in bad faith. For a URS, the burden of proof is higher than a UDRP, requiring clear and convincing evidence and no genuine issue of material fact. The URS option goes into effect when the new gTLDs are launched and can only be used to oppose domain names within the new gTLDs. The cost of the URS is still being determined, but it is anticipated that the expense will be significantly less than the $1,300-$1,500 fee for a single-panel UDRP complaint for one or two domain names.

What Brands Owners Need to Know, and What Steps They Need to Take Now

The benefits of the Clearinghouse are limited, but important. We strongly encourage trademark owners to register their key marks in the Clearinghouse to take advantage of the sunrise registration opportunities in each of the new gTLDs. Although the sunrise periods will not enable trademark owners to register variations of their marks, the ability to file applications for second-level domains that match your key marks before registration is opened to the general public is a significant benefit.

With regard to the trademark claims notification process, we anticipate that this will be of limited benefit because trademark owners will be provided notification only of applications for domain names that match a mark registered in the Clearinghouse. Brand owners are likely to have already registered many, if not most, of these domain names during the sunrise period. Moreover, brand owners will likely have domain name watch services in place for some or all of the new gTLDs, thereby further lessening the importance of notification from the gTLD operator. Nevertheless, the claims notification process may discourage some applicants from registering infringing domain names if they are not comfortable executing the statement of non-infringement that will be required to secure the registration.

We encourage trademark owners to take the following steps at this time:

  • Review your trademark portfolio to determine which trademarks are appropriate for registration in the Clearinghouse, and, if possible, file Clearinghouse applications before May 1, 2013. From a budgeting standpoint, this determination should take into account whether to select a one-, three- or five-year registration, as this decision could significantly impact registration costs. Trademark policies and procedures may also need to be updated to address Clearinghouse registrations for new marks your company adopts in the future.
  • Review the list of proposed gTLDs now to begin making determinations about the domain name registration applications you will need to file when the gTLDs launch. It may be cost-prohibitive to register all of your marks in all of the proposed new gTLDs, and it may not be necessary for you to do so. For example, if your business is in the aerospace industry, it may not be necessary to register domain names for your marks in potentially unrelated gTLDs, such as .dentist. An early start on this process will put you in a position to file appropriate applications when the registration periods open in each gTLD.
  • Review your domain name enforcement strategies and policies. The explosion in the number of new gTLDs will almost certainly lead to a substantial number of infringing domain name registrations. Old domain name enforcement policies and strategies may no longer be practical from a cost or personnel standpoint. We recommend that you develop a plan for determining how to monitor and address infringing registrations in the new gTLDs.