The Internet Corporation of Assigned Names and Numbers (ICANN), which is the non-profit organization that, with the input and advice of more than one hundred national governments, oversees the international domain name system, will soon introduce many new generic top-level domains (gTLDs). While <.com> remains the most popular and well known among the current gTLDs, many new gTLDs will become available this year. Some of the new names will indeed be generic names for industries, products, or activities (such as <.cooking>, <.beauty>, and <.hotel>), some will be geographical place names (such as <.madrid>) and some will be corporate names or brand names (such as <.mattel> and <.maserati>).
Because the domain name registration system operates on a first-come-first-served basis, trademark owners are concerned that the new gTLDs will provide opportunities for cybersquatters to register proprietary trademarks as domain names without authorization of the trademark owners. ICANN has responded to this concern by creating a Trademark Clearinghouse that will provide some automatic protections for trademark owners. Specifically, the Clearinghouse provides two services. The first is a “Sunrise Service.” The Clearinghouse will provide notice to subscribers whenever a new gTLD is about to be launched, and, pursuant to agreements between the registrars of the new gTLDs and ICANN, subscribers will have a minimum 30-day period in which to pre-register second-level domain names matching those trademarks the subscribers have registered with the Clearinghouse before registration in the gTLD is opened to anyone. The second service is a “Trademark Claims Service” which requires the registrars of the new gTLDs to alert a subscriber when someone attempts to register a domain name that exactly matches the mark that the subscriber has registered with the Clearinghouse: the registrar first sends notice to the party attempting to register the domain name, and if that party proceeds with registration despite the notice, then the registrar sends a notification to the trademark owner.
The notable limitation of the Clearinghouse’s Trademark Claims Service is that it is limited to exact matches in spelling. This limitation affects both services: because the Claims Service will not catch phonetic equivalents and other spelling variations in its net, the Sunrise Service will not prevent cybersquatters from registering variations of a subscriber’s mark after the sunrise period ends. Nevertheless, the Clearinghouse’s services may be valuable enforcement tools for trademark owners.
The opportunity to subscribe to the Trademark Clearinghouse services will open to qualifying marks on March 26, 2013. In general, three kinds of trademarks and service marks qualify: registered marks, unregistered marks that have been validated pursuant to a court order and marks specifically protected by a statute or treaty. The cost is $150 per mark for one year, $435 for a three year subscription and $725 for a five year subscription. Bulk pricing is available for subscribers who want to register many marks at once. See the Clearinghouse website for more information: http://www.trademark-clearinghouse.com/.