Trademark Clearinghouse for Top-Level Domains (gTLDs) Launches March 26, 2013 – FAQ

[Link: gTLD Update for February 2013 – Sterne, Kessler, Goldstein & Fox P.L.L.C.]

“The universe of generic top-level domains (gTLDs), currently limited to about a dozen gTLDs such as .com, .net, and .org, will likely explode later this year, as some of the more than 1000 potential new gTLDs are rolled out, including vanity TLDs, like .amex, .ford, .microsoft, and generic extensions like .store, .cloud, .software.” (Fenwick & West)

On March 26, 2013, the Internet Corporation for Assigned Names and Numbers [ICANN] opens the doors of its shiny new Trademark Clearinghouse, the centralized database that will house data on the more than 1,000 new generic Top-Level Domains that ICANN plans to release throughout the remainder of 2013.

Thomas Brooke and Tricia Wozniak of Holland & Knight provide the background:

“The introduction of new gLTDs was intended to increase competition and choice in the domain name space. However, the gTLD expansion will also present new challenges to trademark owners in protecting their rights and preventing cybersquatting. Trademark owners already have to monitor for use of marks with .com, .net, .biz and other standard gTLDs, as well as all the country codes. Adding hundreds of new gTLDs will only make policing rights more expensive and time-consuming for brand owners.”

Enter the clearinghouse. From Beth Goldman and Scott Lonardo of law firm Orrick:

“[The] new tool … will make the process more efficient and manageable for proactive trademark owners by allowing them to submit qualified trademarks to a central repository as a tool to help protect their marks.”

For your reference, a Trademark Clearinghouse FAQ, from lawyers and law firms on JD Supra:

1. Who should register?

“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.” (Womble Carlyle)

2. How does the clearinghouse protect trademarks?

“[T]he trademark owner may be allowed to defensively register their mark as a secondary domain identification within a new gTLD during a Sunrise period (before the domain is available to the general public). With early priority access to registration, the expectation is that the trademark owner will secure potentially infringing domain names for themselves and avoid later and potentially costly legal claims to police and protect their mark.” (Nossaman LLP)

3. What other protections can registration provide?

“[B]y recording their trademark rights with the Trademark Clearinghouse, rights holders have access to ICANN’s Trademark Claims service. This notification service will alert rights holders when a domain has been recorded (under any gTLD) that matches that rights holder’s mark. A current proposal would expand coverage to specific additional strings that have been previously abused by cybersquatters. With so many potential gTLD’s set to issue, the Trademark Clearinghouse could become an important rights management tool.” (BakerHostetler)

4. Which brands qualify?

“Only registered trademarks, judicially validated common-law (unregistered) marks, or trademarks protected by statute or treaty are eligible to participate in the Clearinghouse. In other words, very few unregistered trademarks, no pending trademark applications, no invalidated trademark registrations, or any marks registered only at the state level are eligible. Trademark owners seeking registration with the Clearinghouse should be prepared to submit supporting documents, such as a copy of the registration or relevant ownership information and a sworn statement.” (Wilson Sonsini)

5. Does the clearinghouse block registration of trademarks already in the database?

No. “The Clearinghouse only: 1) gives brand owners an opportunity to register their brands as domains in new gTLDs before the general public (in the Sunrise Periods) and 2) gives notice to brand owners and to domain applicants that an attempted domain registration may infringe a trademark.” (Fenwick & West)

6. How much does it cost to register?

“The Trademark Clearinghouse will cost $150 for a one-year registration, $435 for three years, and $725 for five years. That fee includes registration and verification of the trademark record, Sunrise services, trademark claims services, and linking 10 domain names to the registration.” (Orrick)

7. What is the process for resolving disputes?

“If a third party proceeds with registering a domain name despite receiving notice through the Trademark Clearinghouse mechanism, the trademark owner remains responsible for challenging the domain registration. One new procedure for doing so is the Uniform Rapid Suspension system (URS). The URS is a quick, low-cost alternative to filing a dispute under the existing Uniform Domain Name Dispute Resolution Policy (UDRP)… In addition to the URS, trademarks owners will also be able to utilize the new Post Delegation Dispute Resolution Procedure (PDDRP), which provides a procedure for objecting to a registry whose conduct in the operation or use of its gTLD causes or contributes to trademark abuse.” (Holland & Knight)

The updates:

Find additional updates on the Trademark Clearinghouse at JD Supra Law News>>