As readers of our newsletter will know from our June 2011 edition, the world is entering into a period of great change in the internet domain name space.
Approximately 1,400 new generic (and not so generic) top level domains (“gTLDs”) will soon be coming online. For trademark owners, this will create potential new opportunities for increasing the scope of their internet presence. However, it will also almost inevitably lead to increased costs and headaches for brand owners in terms of protecting their valuable brands online. There are presently approximately two dozen gTLDs, including .com, .net and .org, as well as numerous country code top level domains, such as .ca, .co.uk and .hk (for Canada, the United Kingdom and Hong Kong, respectively). The new gTLDs that are in the process of being rolled out are of four general types, namely, brand names such as .canon and .chevrolet, geographic locations such as .amsterdam and .seattle, industries such as .software, and generic words such as .shop, .art and .book. The Internet Corporation for Assigned Names and Numbers (“ICANN”) is in charge of the gTLDs expansion and is expected to begin approving the first of the new gTLDs for use and registration later in 2013. A full list of all of the proposed gTLDs is available here.
The Trademark Clearinghouse (“TMCH”) has been set up to assist brand owners in their efforts to maintain their trademark rights in the face of the new gTLDs and the increased opportunities for misuse and cybersquatting by other parties. The TMCH will be a centralized global repository for trademark data that will interface with every new gTLD registry. Trademark data submitted by trademark holders to the TMCH will be verified by the TMCH. It will maintain a database of verified trademark records. TMCH registrants will be eligible for priority, sunrise domain name registration periods and for trademark claim services.
TMCH registration began on March 26, 2013. When each new gTLD extension is about to be launched, a trademark owner who has registered its marks with the TMCH will be notified and provided with an opportunity to rely on its trademarks to try and reserve key domain names under each new gTLD. In addition, if a third party tries to register a domain name with one of the new gTLD registries, and that domain name incorporates a brand owner’s mark that is registered with the TMCH, both the third party and the brand owner will be notified. Finally, the brand owner will be able to rely on its marks in the TMCH if it needs to dispute a domain name registration.
TMCH Registration Procedure
Brand owners will be able to submit various types of trademarks to the TMCH, including nationally registered word marks (e.g. Canadian and US trademark registrations), regionally registered word marks (e.g. registered in the EU as a Community Trademark), court validated word marks and word marks recognized by international treaty (e.g. Geographic Indications for spirits or food items). Common law (unregistered) marks that have not yet been registered in a country or international region will not be eligible unless they are judicially validated or recognized by treaty.
Although it is not necessary to provide evidence of use to include a trademark in the TMCH, brand owners relying on national or regional trademark registrations will need to file evidence of use of their marks as a prerequisite for participating in sunrise periods for any new gTLD. Participating in a sunrise period will permit brand owners to request early registration of their authenticated marks as domain names in each new gTLD. Filing evidence of use with the TMCH will also be helpful after the startup protection mechanisms have concluded, since brand owners will be able to use this evidence to base complaints made under the Uniform Rapid Suspension system, in order to attack a third party domain registration that they believe infringes their trademark rights.
Evidence of use will consist of a signed declaration asserting use and a specimen showing how the mark is currently used in the marketplace such as a tag, label, brochure or advertising specimen.
The basic cost of authenticating a single trademark with the TMCH is US$150 for one year, US$435 for three year and US$725 for five-year registrations. There is an opportunity for volume discounts if a brand owner wishes to request inclusion of a large number of its trademarks in the TMCH. Third party service providers may be able to offer authentication with the TMCH at lower prices than brand owners could themselves obtain.
What Brand Owners Should Do Now
Brand owners should review their trademark portfolios now to determine which trademarks are appropriate for registration in the TMCH and should begin submitting applications to the TMCH before the first of the new gTLDs go live, which is expected later in 2013.
Brand owners should review the list of proposed gTLDs to begin making determinations about which domain name registration applications they will need to file when those gTLDs launch, in order to best protect their valuable brands. They should also review their domain name enforcement strategies and policies. This will include developing a plan for determining how to monitor and address infringing registrations in the new gTLDs. In addition, brand owners should familiarize themselves with the post-registration Rights Protections Mechanisms under the new gTLD program, such as the Uniform Rapid Suspension System.
Please contact the writer or any other member of Clark Wilson’s Technology or Intellectual Property Groups for more information about, and to find out how we can assist you with, the TMCH and the new gTLDs generally.