Trademark Clearinghouse Opening March 26, 2013
Beginning in the Spring of 2013, over 1,000 new generic top-level domains (gTLDs) (e.g., cnn.blog) will be introduced on a rolling basis. Trademark owners must become ever more vigilant in protecting their valuable intellectual property rights on the Internet as a result.
On March 26, 2013, the Internet Corporation for Assigned Names and Numbers (ICANN) will open a Trademark Clearinghouse to function as a database for nationally registered trademarks. This Trademark Clearinghouse will be an essential tool for trademark owners to ensure their rights are protected throughout the gTLD roll-out process. If your company or client is interested in defensive registrations or registering a specific domain name in a new gTLD, utilizing the Trademark Clearinghouse is highly recommended.
Overview of the Trademark Clearinghouse
Starting March 26, 2013, nationally or regionally registered (e.g., a Community Trademark registration) word marks from any jurisdiction are eligible to be included in the Trademark Clearinghouse. Each listing/mark will cost $150 per year, with some discounts for multi-year and bulk listings. Since ICANN has required all new gTLDs to utilize the Trademark Clearinghouse, brand owners should carefully analyze their portfolios to determine which marks to submit. Brand owners should consider protecting marks that are essential to their businesses, as there are additional costs for registering domain names with the new gTLD registries.
Benefits of Registering Trademarks with the Trademark Clearinghouse
The submission of trademarks in the Trademark Clearinghouse provides three main benefits:
Sunrise Period: Every new gTLD registry must offer a period of at least 30 days to allow owners of marks listed in the Trademark Clearinghouse to reserve a second level domain name (e.g., cnn.blog). The second level domain name must be identical to the registered trademark. In order to qualify for the Trademark Clearinghouse, an applicant must provide a “Proof of Use” of their trademark in commerce.
Trademark Claims Service: Trademark Clearinghouse registrants will be given notice when an identical second level domain name is registered within the first 60 days of public availability of all new gTLDs. Unlike the sunrise period, there is no proof of use requirement in order to receive such notifications. The registries provide notice but do not block the infringing registrations. In fact, a domain name applicant may register a matching name if they affirm that they have legitimate rights. Therefore, after the first 60 days of public availability, trademark owners are responsible for utilizing their own trademark monitoring services to detect domain names of potential concern.
Rights Protection Mechanisms: Finally, Trademark Clearinghouse registrants are provided the opportunity to utilize a number of rights protection mechanisms:
Uniform Rapid Suspension (URS): The URS is a quick, low-cost method for suspending infringing domain names for the remainder of their term. The URS should be used in cases of obvious trademark infringement.
Uniform Dispute Resolution Process (UDRP): UDRP proceedings are intended for disputes in which the domain name registrant registers in bad faith and has no rights to the confusingly similar domain name. The UDRP provides for the transfer of domain names.
Post Delegation Dispute Resolution Procedure (PDDRP): The PDDRP provides trademark owners an arbitration forum against registry operators that are demonstrating bad faith intent to profit by registering infringing domain names. If successful, costs are reimbursed by the registry operator.
Considering that over 1,000 new gTLDs will be introduced on a rolling basis, there is a significant risk of trademark infringement. If you are interested in the Trademark Clearinghouse, now is the time to analyze your trademark portfolio in order to select marks for inclusion. Nath, Goldberg & Meyer is available to assist in protecting your valuable trademark rights. Please contact us if you have any questions about the Trademark Clearinghouse.
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