ICANN To Provide Trademark Clearinghouse to Assist Brand Owners With Protecting Their Rights at the New gTLDS

by Womble Bond Dickinson

ICANN, the international agency responsible for oversight of the domain name system, is scheduled to make an unknown number of new generic Top-Level Domain Names (“New gTLDs”) available in mid-2013. The process to roll out the New gTLDs began several years back, and ICANN is in the final stages of implementing this program. The public is generally familiar with gTLDs such as -.com, -.net, -.biz and -.org. However, the New gTLDs may be .anything, from something as specific as .brand (for example, .wcsr) to something as general as .fitness.
In an effort to assist trademark owners with protecting and enforcing their trademarks against unauthorized users at the various soon-to-be-available New gTLDs, ICANN is launching a Trademark Clearinghouse on March 26, 2013. For a fee, trademark owners will be able to submit information related to their trademarks to the Trademark Clearinghouse for recordation. Trademarks may be recorded in the Trademark Clearinghouse for 3, 5 or 7 years. The cost for registering with the Trademark Clearinghouse ranges from $95 to $150 per trademark record per year, depending on the number of trademarks submitted and the length of their registration period in the Trademark Clearinghouse. Trademark owners receive the following benefits by recording their marks in the Trademark Clearinghouse:
  • Priority Registration at any New gTLD: Current ICANN policy requires each New gTLD to provide at least a 30-day window for registration by trademark owners, which is not open to the general public, called a Sunrise period. Only trademarks recorded in the Trademark Clearinghouse may be registered during the Sunrise period for any New gTLD.
  • Notice of Infringing Registration at any New gTLD: Once a trademark is registered with the Trademark Clearinghouse, a trademark owner will be notified if a third party registers a domain name at a New gTLD that is identical to the trademark owner’s trademark within the 60-day Trademark Claims period set to follow the Sunrise Registration periods. The Trademark Claims period tracks the first months of public registration availability at a New gTLD. Early notification of infringement during the Trademark Claims period will allow trademark owners to take swift action against infringers, including taking advantage of the Uniform Domain Name Dispute Resolution Policy, and other fast-paced dispute policies put in place by ICANN.
The March 26, 2013 launch of the ICANN Trademark Clearinghouse is drawing near. Trademark owners should begin considering whether registration in the Trademark Clearinghouse may be right for their key brands. Trademark owners interested in owning the domain name corresponding to their trademark at any of the New gTLDs should seriously consider applying. Similarly, trademark owners who are likely to take action against cybersquatters should also seriously consider applying. The Trademark Clearinghouse will provide trademark owners with a streamlined plan for policing key brands and protecting valuable goodwill once the New gTLDs expand the reach of cyberspace.


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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