ICANN's Trademark Clearinghouse For Expanded gTLDs To Launch March 26: Are You Ready?

by Perkins Coie
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Introduction

The Internet Corporation for Assigned Names and Numbers (ICANN), which is charged with enabling and securing the Internet, has been hard at work on a significant expansion project.  This expansion includes changes to the Internet’s gTLD structure (gTLD is an acronym for generic top-level domain, which is the string of characters to the right of the “dot", e.g., .com, .net, .org, .biz, .info).  The change allows entities to create and own gTLDs, which could include brand names like .PEPSI or .AETNA or generic terms like .STORE or .STORAGE. In mid-2012, ICANN published a list of the more than 1,900 applicants seeking to obtain a piece of this new Internet real estate.  Given the hefty price tag of $180,000 per gTLD application, it was no surprise that most of the applicants were corporations, major Internet stakeholders or Internet speculators.  The first gTLD is expected to be approved by ICANN as early as April 2013. 

The Trademark Clearinghouse

ICANN also provided brand owners with mechanisms to object to any proposed gTLD extensions on the basis of trademark infringement.  For most brand owners, however, the concern is not just with these new gTLD extensions, but also with attempts by third parties to register second-level domains within these new gTLD extensions, namely, terms to the left of the “dot,” e.g., [YOUR BRAND].STORE or [YOUR BRAND].STORAGE.

The Trademark Clearinghouse (TMCH) is a central repository for trademark information, intended to coordinate the protection of trademark rights during the initial issuance of new second-level domain names within these new gTLD extensions.  The TMCH will operate independently from ICANN.  Brand owners can “register” their trademarks with the TMCH.  Doing so provides:

  • Sunrise Service:  For each new gTLD launch, e.g., .STORAGE, if you opt in and otherwise meet the requirements (see below), there will be a 30-day Sunrise Period during which you will: (i) receive notice if someone else applies to register a second-level domain name that is an identical match to a TMCH-recorded mark and (ii) have the opportunity to register a second-level domain name for your exact TMCH-registered trademark(s), e.g., [YOUR BRAND].STORAGE

  • Notification Service:  For at least 60 days following the close of the Sunrise period for each new gTLD launch, the applicants for the second-level domain name will receive notification if their requested domain name is an identical match to a trademark recorded in the TMCH.  If the applicant proceeds to register the domain name, then the owner of the TMCH-registered mark will receive notice that the domain name has been registered. 

In short, registration with the TMCH provides you with notice if another party seeks to register your mark as a second-level domain.  If, in addition, you want to have the opportunity to register your mark as a second-level domain in the Sunrise Period for each new gTLD launch, you need to opt in to the Sunrise Period.  To opt into the Sunrise Period, you also receive notice 30 days in advance of the "standard" notification period.

It is important, however, to understand the TMCH's limitations.  The new gTLD owners are not obligated to deny applications for second level domains, simply because the domain name could conflict with another party's trademark registered in the TMCH; the only obligation is to provide notice.  Moreover, gTLD owners are only obligated to provide brand owners with notice during the time-limited periods outlined above.  Given that ICANN will launch these gTLDs in batches, however, the TMCH could potentially provide benefits to brand owners for several years.

Registrations will be available in one, three, and five-year terms.  For a one-year registration, the registration fee will cost around $150, depending on the vendor.  

Next Steps

ICANN has indicated that March 26, 2013 will be the launch date for the TMCH, barring any further delays.  Since the first gTLDs could be approved as early as April 2013, we recommend that you consider registering your key brands with the TMCH as soon as it opens.  It may not be necessary for brand owners to register every trademark within the TMCH; however, brand owners should strategically analyze their trademark portfolios to determine which marks may be good candidates for registration during gTLD Sunrise Periods, including which marks are most likely to be subject to trademark infringement by domain name registrants.

As part of the registration process, the TMCH will review and authenticate the asserted trademark rights of brand owners.  To prepare for this review and authentication process, brand owners should assemble information that:

  • Demonstrates a valid trademark ownership or licensed right by way of a: (i) certificate of a nationally or regionally registered trademark (this is likely to be the most streamlined proof); (ii) court-validated trademark evidenced by an order or judgment; and/or (iii) statute or treaty protected trademark; and

  • If you opt-in to the gTLD Sunrise Period service, you must demonstrate use of the trademark as supported by a declaration and single sample of proof of use.  Additionally, the supporting trademark registration must have been applied for prior to June 13, 2012, and issued on or before the date the new gTLD of interest is accepted.

Conclusion

Importantly, as stated above, TMCH registration is not a brand enforcement mechanism, but rather an opportunity to receive notice of a potentially infringing domain name registration attempt for a new gTLD extension during the prescribed time periods.  If you opt-in to the Sunrise Period services, TMCH registration will also provide you with an advanced opportunity to register new second-level domain names matching your TMCH-registered trademark for each new gTLD launched.  Whether it makes sense to participate in the TMCH—particularly considering the rather short notice periods—depends on your objectives.  The Sunrise period service is likely most beneficial for those companies who want early notice of third-party domain name registration attempts, as well as an early opportunity to register new gTLD domain names that are an identical match to a TMCH-registered mark.  Absent such objectives, however, you may be better off participating in other trademark and domain name watch programs that have longer subscription periods and may be more cost efficient.

There are numerous exceptions, restrictions and documentary requirements for TMCH registrations.  Contact counsel for assistance with all aspects of the TMCH, including brand protection strategy and enforcement options in this new expanded domain name territory.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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