Domain Name Update: Trademark Clearinghouse to Launch in March

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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As we have discussed at length, over the next couple of years several hundred new generic top-level domain names (gTLDs) such as .family, .home, and .toys are expected to be introduced into the domain name system.  The majority of these domains will be “open” in nature, meaning they will be open to the public for registration of second-level domains.  On the bright side, this means that I, for instance, can finally register such highly desirable domain names as joshjarvisisagreat.lawyer or joshjarvisisreally.cool.  Unfortunately, it also means that cybersquatters have many new avenues on which to ply their unscrupulous trade.  Brand owners must be prepared.  Enter the Trademark Clearinghouse.

What is the Trademark Clearinghouse?

The Trademark Clearinghouse is the staging ground for the ICANN-mandated trademark protections for the new gTLDs.  It is intended to receive and authenticate trademark rights information, and will play a role in trademark protection during the launch phase of each new gTLD registry and on an ongoing basis.  The Trademark Clearinghouse launches on March 26, 2013.

What Safeguards does the Trademark Clearinghouse Facilitate?

By itself, the Trademark Clearinghouse is merely a centralized repository of validated trademark rights, but “registration” of trademarks in the Trademark Clearinghouse enables brand owners to participate in two key safeguards:

  • Sunrise.  A Trademark Clearinghouse registration is a prerequisite to participating in the Sunrise period for each new gTLD.  During each Sunrise, trademark owners have the opportunity to register domain names consisting of their brands before that gTLD is opened to the general public.  For instance, a Trademark Clearinghouse registration of the PEPSI trademark will allow PepsiCo to register pepsi.food and pepsi.love during those gTLDs’ respective Sunrise periods, before the general public (including cybersquatters) has a chance to do so.  Currently, the Sunrise periods must run for at least 30 days prior to public availability of second-level registrations in each new gTLD, and are limited to exact matches to the corresponding Trademark Clearinghouse entries.  A proposal on the table would add an additional 30-day advance notice period to “facilitate awareness and enable effective participation,” and possibly expand the coverage to specific strings that have been previously abused by cybersquatters.
  • Trademark Claims.  The Trademark Claims service operates during the first 60 days of general availability in each new gTLD, and is intended to warn both trademark owners and domain name registrants of possible trademark violations.  When a potential domain name registrant attempts to purchase a domain name corresponding to a trademark listed in the Trademark Clearinghouse — for instance, pepsi.food — that potential registrant will be greeted with a warning notice apprising him or her of PepsiCo’s trademark rights.  The Trademark Claims service will not, however, prevent registrants from moving forward with domain name registration despite the warning notice.  If our thirsty cybersquatter does indeed move forward, the second part of the Trademark Claims service kicks in, and PepsiCo will receive notification of the registration of pepsi.food.  At that point, it is up to PepsiCo to determine whether to take action, legal or otherwise.  Currently, the Trademark Claims service is limited to exact matches of Trademark Clearinghouse entries.  A proposal on the table would add coverage for specific additional strings that have been previously abused by cybersquatters, would extend the time period to 90 days, and may add additional limited coverage beyond 90 days.

What Doesn’t the Trademark Clearinghouse Do?

A whole lot.  It is important to understand that, beyond the Sunrise eligibility and Trademark Claims service, is it merely a central repository of authenticated trademark data.  Most importantly, it does not act to preemptively “block” domain names consisting of or otherwise containing trademarks, and proposals along these lines from the IP rights community have been rebuffed time and time again. While certain gTLD registries might offer additional services along these lines, for the most part trademark owners will have to avail themselves of Sunrise periods and, after that, general availability periods, and maintain domain names they wish to keep out of harm’s way by paying the relevant annual registration fees.  Otherwise, brand owners must police their brands and combat cybersquatting using the usual dispute mechanisms such as the UDRP, as well as the newly introduced Uniform Rapid Suspension (URS) system.

How Much Does It Cost?

For most trademark owners, the Trademark Clearinghouse will cost $150 per trademark, per year, with modest discounts for multi-year registrations.  Trademark agents and brand owners with many trademarks can take advantage of a somewhat complicated advanced fee structure that requires establishing a prepayment account.  Additional details regarding the Trademark Clearinghouse fees are available here.

The $150 per trademark annual fee includes enrollment in the Trademark Claims service.  However, Sunrise registrations in specific gTLDs are not included, and those prices are set by individual gTLD registries (most will probably be in the realm of $200 each).  It’s easy to see how even a company with a single valuable trademark could spend many thousands of dollars registering that brand across the new gTLDs during the Sunrise periods, let alone the cost of registering other domain names containing that trademark once the general availability periods open up.

What Is the Application Process?

The process, outlined in the Trademark Clearinghouse guidelines, requires that brand owners submit their trademark information and the relevant application fee.  In general, national trademark registrations are required (in the U.S., only federal registrations on the Principal Register are sufficient), though Trademark Clearinghouse registration is also possible in certain other limited scenarios (such as a court-validated unregistered trademark).  If the brand owner wishes to participate in any of the various Sunrise periods, it must also submit proof of use in the form of a declaration and a specimen of use.

Should My Company Participate?

In most cases, yes.  Registration in the Trademark Clearinghouse is essentially a requirement for companies to effectively police their brands, as most companies will want to take advantage of the Sunrise periods and Trademark Claims services in at least a few gTLDs relevant to their companies and industries.  Many companies — especially those with well-known brands — may want to do much more, in addition to developing a comprehensive domain name acquisition and enforcement strategy across the new gTLDs.

What Are the Next Steps?

Register your key brands in the Trademark Clearinghouse once it opens on March 26, 2013.  Pay close attention to news regarding the actual launch of new gTLDs and their respective Sunrise periods, and plan to file Sunrise applications in those gTLDs relevant to your organization or which otherwise merit defensive registrations.  Read and subscribe to our blog, which will be updated with additional relevant information as the new gTLD process progresses.

 

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.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

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