Home » Trade Marks » ICANN & the Trademark Clearinghouse – relief for trade mark owners

ICANN & the Trademark Clearinghouse – relief for trade mark owners

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icannlogoThe launch of new generic Internet domain extensions highly expands the domain name system and increases competition.

The press has widely reported the launch of the new generic top-level domains (gTLDs) which can include a geographic location (e.g. NYC), a generic term (e.g. Music) or a mark (Ralphlauren). Nearly 2000 applications should be added this year to the currently available gTLDs (.com, .net) and country code top-level domains (ccTLDs, e.g. geographical location .uk, .eu). The examination of hundreds of candidates revealed last year (see article in the Figaro blog here) the avid appetite of Amazon and Google for new extensions who spent millions to request 101 and 76 Internet extensions respectively revolving around digital content and media issues.

This is considered one of the most important changes in the structure of the Internet for years. A symbiosis has to be found to regulate the protection of trade mark owners and their Intellectual Property rights.

In this respect, The Internet Corporation for Assigned Names and Numbers (ICANN), which is responsible for the management of the top-level domain name space, has established a rights protection system through the creation of a database, called the Trademark Clearinghouse (TMCH),  for names that are the subject of a prior registration. The Trademark Clearinghouse has been available since 26 March.

The TMCH is a one-stop-solution for reporting and monitoring between earlier trade marks and subsequent reservations of domain names as new gTLDs.

There are advantages to registering a trade mark in TMCH which provides the following services:

Sunrise Service

All new gTLDs will be subject to a mandatory sunrise period of at least 30 days before the domain names are offered to the general public. Trademark owners with a validated trademark entry in the TMCH can take advantage of the sunrise period to safeguard the domain name that matches their trademark.

Trade Mark Claim Service

Trade mark owners who reserved a domain name will be informed of the existence of an earlier trade mark registered in the TMCH. After having been informed of an identical gTLD reservation, the owners of the earlier trade mark may possibly oppose this reservation through a new simplified procedure for dispute resolution called Uniform Rapid Suspension (URS). It would cost trade mark owners between £200 and £300 to file a URS complaint in an attempt to suspend a domain name from use. Moreover, after a 60 day period, trade mark owners could invoke ICANN’s Uniform Domain-Name Dispute Resolution Policy (UDRP) to file a complaint regarding a particular domain name and the fee is £1,000 per trade mark .

The effectiveness of the Trademark Clearinghouse should become clearer over the next few months. One area of concern that has been flagged is in the area of typosquatting where a mis-spelled domain name is registered in a bid to confuse viewers that the website in question is from the legitimate brand owner (e.g. APPPLE versus APPLE).

In the meantime, if you have a query about the Trademark Clearinghouse or a more general query about a domain name then contact your trade mark attorney for more details/assistance.

Amélie Gérard  24 April 2013

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