Trademark Clearinghouse: Be Prepared for the Generic Level Domain (GTLD) Explosion

The Internet Corporation for Assigned Names and Numbers (ICANN) has come up with an innovative solution, called “The Trademark Clearinghouse”, designed to close the gap between domain names and registered trademark rights holders.

The Trademark Clearinghouse will soon be incorporated into the new registration system for Generic Level Domains (gTLDs) to authenticate and protect registered trademark rights. There are different types of gTLDs, including geographical domains (for example, .scotland), community domains (such as .hiv), brand names (.ferrari) and generic / descriptive domains (such as .shop or .hairdresser).

ICANN will set up a database of trademarks, which have been registered at the Trademark Clearinghouse and when an attempt is made to register a new domain that contains the listed trademark, the Applicant will receive a warning letter informing them that the requested domain name may contravene registered third party rights. Prior to this, there will be a “Sunrise” period (a minimum of 30 days), during which trademark owners get the first opportunity to register a domain name containing their trademark. When registering a trademark during the “Sunrise” period, the registrant must also supply evidence to demonstrate that the trademark in question is in genuine use. This is made up of a signed Declaration of Use and a sample demonstrating how the trademark is used. Acceptable samples would be tags, labels product containers, advertising or marketing materials. After the expiry of the “Sunrise” period, domain names will be awarded on a first-come first served basis.

The Trademark Clearinghouse validation and authentication services will be managed by Deloitte and IBM and they will be responsible for deciding the cost to register a trademark with the Clearinghouse. Present speculation is that the cost of this will be $ 150.

In order to register your trademark with the Clearinghouse, it must be registered, validated through a court of law or protected by statute, for example, an unregistered trademark.

If a trademark owner wishes to object to the registration of a domain name, he can make use of either the Uniform Rapid Suspension (URS) system or the existing Uniform Dispute Resolution procedure (UDRP). The URS system should be a quick and cost effective way to obtain suspension of an “infringing” domain registration.

Complete guidelines on the workings of the above will probably not go live until late October 2012 or after. Unfortunately, despite lobbying to the contrary, the rights of notification only last for a 30 day period from the creation of gTLDs and outside this, third parties may be able register the name during the period when the domains go into “Landrush”, if a proactive and vigilant approach is not adopted.

Put simply, although unregistered rights remain, the Trademark Clearinghouse system should reduce the burden on rights holders.