Launch of the Trademark Clearinghouse from 26 March 2013

Protection for trademark owners from domain grabbing

As we reported last year, in 2012 the ICANN (Internet Cooperation for Assigned Names and Numbers) launched an application procedure for new Top Level Domains (TLDs). As at 30 May 2012, over 1500 applications had been made for the new Top Level Domains with ICANN. These include Top Level Domains composed as follows:

  • General TLDs (e.g. xy.shop);
  • city designating TLDs (e.g. xy.berlin, xy.nyc);
  • geographical TLDs (e.g. xy.bayern); as well as
  • TLDs not containing Roman alphabet characters (e.g. xy.[arabic characters]); and also
  • TLDs containing trademarks (e.g. xy.mcdonalds, xy.deloitte).

Over the course of the next two years the ICANN will decide, on a case by case basis, whether these new TLDs can be approved. The order of processing and the status of the registration procedures of the individual new TLDs can be seen via the following link: https://gtldresult.icann.org/application-result/applicationstatus

For trademark owners the result of this is an additional need to closely-monitor, since the registration of hundreds of further Top Level Domains will lead to a variety of registered domains names which may include 'before the dot', i.e. through the new TLD, certain trademark-infringing terms.

In response to this problem, the so-called Trademark Clearinghouse has been announced to start work from 26 March 2013, where trademark owners will be able to file their trademarks (see also http://trademark-clearinghouse.com/, http://newgtlds.icann.org/en/about/trademark-clearinghouse/faqs).

The Trademark Clearinghouse will provide two different services:

  1. Firstly, trademark owners will be able to register domain names for the new TLDs corresponding to the trademarks previously filed during a Sunrise Period of 30 days before the release of new TLDs to the wider public. After expiry of the Sunrise Period registration of TLDs amongst the public will be freely available.

    By way of example, if the application procedure for the TLD .shop has closed, a trademark owner who had previously filed its trademark can apply to register a domain containing that trademark 30 days before the wider public may apply (e.g. trademarkfiled.shop).
  2. Secondly and thereafter, a Trademark Claims Period begins, lasting at least 60 days, during which all third parties who would like to register a domain which corresponds to a filed trademark will be informed about that trademark. If this third party does nonetheless register the domain name, the respective trademark owner will be informed about the registration of the domain by Trademark Clearinghouse.

If an infringing domain is registered by a third party, the Uniform Domain Name Dispute Resolution Policy (or as abbreviated the UDRP procedure) already in place, as well as a newly-introduced Uniform Rapid Suspension System (URS) which will allow injunctive relief, is available to the trademark owner. However, the trademark owner must first of all be aware of the infringing domain. Taking this into consideration, we would recommend the filing of important trademarks at Trademark Clearing House.

The following signs will be accepted for filing at Trademark Clearing House:

  • registered trademarks;
  • unregistered trademarks which have been certified by a court or through another judicial process on a national level;
  • word marks which are protected by law or by way of a contract (e.g. the Olympic symbol through the German Olympic Protection Act [OlympSchG]).

The fee for filing at Trademark Clearing House is USD 150 per trademark per year. This amount is not very high in light of the advantages of being able to use the Sunrise Period for registering a domain.

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