By: Philip Nulud, Esq.
The Internet Corporation for Assigned Names and Numbers (ICANN) has recently launched the Trademark Clearinghouse (TMCH). ICANN has billed the TMCH as the “most important rights protection mechanism built into ICANN’s new gTLD program.”
Approximately 2000 new generic top level domains, similar to .com, .net, .biz, etc., but with generic names (gTLDs), will be released later this year under the new gTLD program. This new system will allow the registration of millions of new domain names. The new system may also be problematic for trademark owners as it will allow the registration of domain names containing a party’s trademarks without the trademark owners’ permission. While dispute policies such as the Uniform Rapid Suspension and a Uniform Domain Name Dispute Resolution Policy have been implemented and are available, the Trademark Clearinghouse is designed to make things easier for trademark owners.
The Trademark Clearinghouse will provide a database for brand owners to submit their trademark data prior to and during the launch of the new gTLDs. One benefit of the system is that once a trademark is verified by the TMCH, the TMCH will notify the participant whenever a Sunrise period—a prelaunch phase providing mark holders the opportunity to register domain names in a top level domain before registration is generally available to the public—is scheduled and give the participant the advanced opportunity to obtain a domain name.
Another benefit is that the TMCH will provide a participant access to a trademark claims service, which will notify the trademark owner if a third party registers a domain name that matches its trademark record in the Clearinghouse.
Only registered trademarks, marks protected by a statute or treaty, or court-validated marks are accepted in the TMCH. Brand owners who are concerned about their trademark rights under the gTLD program are encouraged to register their trademarks as soon as possible, and submit existing trademarks with the Trademark Clearinghouse.