• Cassandra L. Wilkinson

New Generic Top-Level Domains and the Trademark Clearinghouse


In the wake of .xxx domains becoming reality in 2012, ICANN, the entity which governs Internet domain names, began accepting applications last year for custom generic top-level domains (gTLDs). Under ICANN’s New gTLD Program, instead of being restricted to .com, .net, .info and the like, custom suffixes can be purchased and used as website addresses, such as for brands like .HJK, .facebook or .google, for generic terms like .news, .lawyer or .food, or for geographic terms like .oklahoma or .tulsa. Afterward, the domain owner can control and manage its gTLDs so that websites like lawyers.HJK, blog.HJK, or services.HJK resolve to the appropriate address. ICANN is set to launch over 1,000 new gTLDs in 2013, and will continue to release more gTLDs on a rolling basis.
In order to protect brands and intellectual property rights, ICANN has designed the Trademark Clearinghouse (TMCH) as a centralized repository of authenticated registered trademarks. A trademark owner (individual or company) or its agent can submit trademark rights to the TMCH for independent validation by a third-party provider. Once the trademark information is validated and approved, the TMCH provides two sets of Rights Protection Mechanisms (RPMs), consisting of the Sunrise Period and the Trademark Claims Service. During the Sunrise Period, the trademark owner has an advanced opportunity to purchase and register domain names corresponding to its marks before they are generally available to the public. The Trademark Claims Service follows the Sunrise Period, and during the Trademark Claims period, anyone attempting to register a domain name matching a mark that is recorded in the TMCH will receive a notice with the matching mark information. This notice will inform any potential registrants about the rights of the trademark holder(s), and requires the registrant to provide assurances that the use of the domain name will not infringe on the rights of the existing trademark owner(s). If the notified party proceeds to register the domain name, the TMCH will send a notice to the trademark owner(s) with matching records in the TMCH informing the owner(s) that someone has registered the domain name. With this notice, the trademark owner(s) can consider using various enforcement measures, such as the Uniform Domain Name Resolution Policy (UDRP), Uniform Rapid Suspension System (URS) or other trademark protections to be implemented by gTLD registries. Even though submission to the TMCH does not prevent registrations or block others from registering trademarks as domain names, the warning provided through the Trademark Claims Service should help raise awareness of trademark owners’ rights and may strengthen enforcement proceedings cases with additional evidence of intent or knowledge of the infringement.
Most trademarks that are registered in a national or regional jurisdiction, EU community trademarks and those with protection under the Madrid protocol, are eligible for submission in the TMCH. In addition to registered trademarks, word marks that have been validated through a court of law or other judicial proceeding and those protected by statute or treaty qualify for registration in the TMCH. For trademarks that include a design element, the mark may be registered with the TMCH if the word elements are dominant, clearly separable or distinguishable from the design element, and all predominant characters are included in the trademark record submitted to the TMCH in the same order as they appear in the mark.
HJK can help in your important trademark registration and protection issues, including your decisions on what trademarks to record, what gTLDs to seek Sunrise Period registration, how to handle Trademark Claims Service notices and how to monitor the new registries on an ongoing basis. If you would like additional information on the TMCH, please contact an HJK attorney.

#Trademarks

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