[co-author: Laetitia Arrault]

.CLUB Domains, the Registry operating the .CLUB new generic Top Level Domain (gTLD), has recently launched a new service that enables qualified trade mark holders to block .CLUB domain name registrations containing their trade marks.

According to the .CLUB Domains’ press release, the Trademark Sentry Unlimited Name Blocking Service (UNBS) “protects a trademark from appearing in any portion of a domain with the popular .CLUB extension – literally covering trillions of permutations of a qualified trademark. Blocked at the registry level, protected names show up as “unavailable” through any registrar’s domain search.”

This service is therefore different from other existing brand protection services, such as Donuts’ Domain Protected Marks List (DPML), which enables trade mark holders to block their trade marks across Donut’s entire portfolio of 242 new gTLDs for a period of 5 years.

Indeed, whereas the Unlimited Name Blocking Service is limited to only one new gTLD (.CLUB), it does not limit protection to one string (= the trade mark term), but rather enables qualified trade mark holders to block all domain name registrations that contain their trade marks. The Registry gives the example of the qualified trade mark NEUSTAR which would block the registration of domain names such as , , , etc.

This is particularly interesting for trade mark holders who are often the target of cybersquatters, especially as .CLUB is among the most popular new gTLDs. Indeed it is among the top 5 new gTLDs, ranking at the 4^th place with over 1.5 million registered domain names. The first three are .TOP (3.4 million domain names), .XYZ (2.3 million) and .LOAN (1.6 million). The 5^th is .ONLINE with just under 1.3 million registered domain names.

According to the Registry, being a popular new gTLD, .CLUB receives many UDRP and URS proceedings. Thus qualified trade mark holders subscribing to this new service would, according to the Registry, have their trade mark totally protected under .CLUB and would spare themselves the trouble of engaging in expensive proceedings “for far less than the cost of a single UDRP or URS proceeding.” Indeed the suggested retail cost of this service is $2,000 per qualified trade mark blocked for a period of 3 years.

However, not all trade marks are eligible for this service. The Registry has put in place a number of restrictions which will actually disqualify quite a few trade marks from the outset.

The main requirement is that the trade mark must be “fanciful”, as defined by the US Patent and Trademark Office (USPTO), that is to say that it needs to be an invented term. The Registry provides the example of the trade mark “Apple”, which would therefore not qualify. However, the Registry also specifies that “marks that are not fanciful but when combined with another word become sufficiently unique may be allowed” and provides the example of “AppleComputer” or “AppleWatch” which would be accepted as qualified trade marks.

The trade mark must also meet the Registry’s “additional requirements” and approval is subject to the Registry’s discretion. The additional requirements include the following:

• The trade mark must be at least 5 characters long.
• The trade mark holder must provide proof of an active US trade mark.
• The acceptance of the trade mark must not “cause dictionary words or common phrases to become unavailable.” Therefore, for example, a trade mark “LOVET” may not qualify as it would prevent the registration of non-infringing domain names such as , , etc.
• The acceptance of the trade mark must not “cause premium names to become unavailable.”
• The acceptance of the trade mark must not “cause non-infringing domain names already registered in the .CLUB name space not to be renewable upon drop.”
• The acceptance of the trade mark must not “unfairly prevent marks which are registered in the USPTO to third parties to become unavailable.”

As summarised by the Registry, a trade mark “will be considered for participation in the UNBS program if, in the [Registry’s] sole and absolute discretion, [its] acceptance would not unfairly interfere with third parties’ non-infringing activity in the .CLUB name space.”

The full list of the Registry’s additional requirements is available here.

In view of all the restrictions, the number of candidates is likely to be limited and so it is difficult to say if this service will prove to be successful. However trade mark holders that do qualify, are often targeted by cybersquatters and often file UDRPs, should probably consider this service in order to fully protect their trade marks under .CLUB.

This post is selected from our Anchovy News publication: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house.

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