The Trademark Clearinghouse: What You Need to Know

by White & Case LLP
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The Internet Corporation for Assigned Names and Numbers ("ICANN") will be expanding the number of generic top-level domains ("gTLDs") as a result of the application process that commenced in January 2012. It is expected that more than 1200 new gTLDs will be made available in late 2013 through 2014. Examples of some of the new gTLDs are .money, .art, .law, .lawyer, .bank, .software and .brand. Also gTLDs that contain non-Latin script, known as Internationalized Domain Names ("IDNS"), including Chinese, Arabic and other alphabets will launch first, some as early as May.

In anticipation of the scramble to register new domain names using these gTLDs, ICANN has introduced the Trademark Clearinghouse ("TMCH") which will streamline the process for registering and protecting trademarks used in these new domains by providing a single, global repository for verified trademark rights. The TMCH database, which launched on March 26, 2013, also provides sunrise and claim notice services with regard to use of those identical trademarks as second-level domain names.

The types of trademarks that can be registered with the TMCH are nationally or regionally registered trademarks, court-validated unregistered trademarks, and statute/treaty protected trademarks. The TMCH may accept and verify other types of trademarks upon the request of the domain name registries. There are also some exceptions to what is considered "identical" including, for example, the word "and" for "&". Furthermore, some non-identical but "abused" domain names (for example, typo domain names won as a result of court or UDRP proceedings) will benefit from the notice service if they are registered with the TMCH.

Advantages of Registering Trademarks with the TMCH

1. Sunrise Services
Sunrise is an initial period of at least thirty days prior to the launch of each new gTLD for trademark owners who have filed their trademarks with the TMCH to obtain second-level domain names before those domain names are offered to the general public. For example, when the gTLD for .law becomes available, White & Case would have priority to secure the domain name whitecase.law in advance of .law being made available to the public, provided it had previously filed one of its global trademark registrations for WHITE & CASE with the TMCH. Submitting a mark to the TMCH does not achieve registration of any specific domain name; a trademark owner would need to separately register the domain name with the appropriate registry, subject to that registry's rules and requirements. If the trademark owner successfully registers the desired domain name, it can either use the name for its own business purposes or simply park the name to prevent cybersquatters from doing so.

2. Notification Services
For a period of ninety days after launch of a new gTLD, a trademark owner who has filed a mark with the TMCH will receive notification when anyone attempts to register a domain name containing an identical match to the trademark validated by the TMCH. The party attempting such registration will automatically receive notice of the trademark owner's prior rights. If the domain name applicant proceeds to register the domain name, the trademark owner is notified again and can then take appropriate action through UDRP or court proceedings. It will, however, be easier to establish bad faith of the party registering the domain name since they proceeded after receiving notice of the prior validated trademark rights.

The TMCH Registration Procedure

A trademark owner (or a licensee or assignee) may submit trademarks directly to the TMCH as a "trademark holder" or they may use the services of a third party "trademark agent." Trademark agents are required to create deposit accounts of $15,000. The fees for trademark holders who file their marks directly with the TMCH can be as low as $150 per mark annually. A range of discounts are available for multiple filings and longer registration periods. Such fees should also be factored into the trademark holder's budget.

Next Steps for Brand Owners

  • Develop a strategy for filing trademarks with the TMCH.
  • Review the new gTLDs and consider registering those that may affect your business.
  • Register early.
  • Monitor the new gTLDs for non-identical but confusingly similar domain names.

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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