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Trademark Clearinghouse: ICANN as Big Brother?

List of categories of generic domains

The Internet Corporation for Assigned Names and Numbers (ICANN)  has brought another layer of complexity to protecting trademarks from being poached as part of a domain name.  Trademark owners may now submit their brand names to be included in the new Trademark Clearinghouse.  The goal is to serve as a centralized database of verified information in order that trademark holders throughout the world can better protect their rights on the Internet.

Since we first reported on the Clearinghouse, over 620 domains have been approved by ICANN.  Over the next few years, unsuspecting brand owners may well be blind sided by theft of their trademarks by registrants in the new domain registries.  Trademark owners may now submit their brand names to be included in the new Trademark Clearinghouse which offers the opportunity to prevent such theft.   The Trademark Clearinghouse allows brand owners to register second level domain names containing trademarks with the registry to allow the gTLD operators and registry to better deal with anticipated trademark infringement claims.

Examples:  yourbrand .gripe, .sucks, .corp, .sex, .porn, .home, .web, .charity, .paris, .news 

 

In addition, DONUTS, has already seized the day, and is the owner of over 200 of the approved domains and is offering its own form of registration.

Trademark owners should register key trademarks with the Clearinghouse and/or in the registries themselves.

ICANN, a private nonprofit corporation, operating under contract from the U.S. Department of Commerce, manages the domain structure for the Internet.  ICANN brought us not only .com, but the other various endings such as .org, .us, .info and the most recently the controversial gTLD program.  As most of people now know, companies register all the various unused endings in self defense to prevent poaching, while providing greater profits for domain registrars for otherwise useless endings.  See the earlier post on the new gTLD’s.

Applications for the gTLD’s are $185,000 and estimates are $25,000 per year to operate.  This scheme is all well and good for large multinationals, but what about the average brand owner trying to protect their brand names?  An unending wave of new domain endings also expands  the potential for online trademark infringement as well as the cost of preventing even greater risks of Internet poaching.

How to List Your Trademarks with the Trademark Clearinghouse

Trademark owners can submit to the Trademark Clearinghouse as second level domain names 1) nationally or internationally registered trademarks; 2) court validated trademarks; and 3) marks protected by statute or treaty.  Pending applications to register do not qualify.  Deloitte Enterprise Risk Services will verify the applications.

What does it cost?

Costs are about $150 per mark per year.  However, registration for longer periods provides discounts, as well as a means of earning Status Points for early filing.  The fee structure is detailed here:  Clearinghouse Fees

Sunrise Services

Registration confers limited benefits to participate in the “Trademark Claims” service but does not act to bar infringing domain registrations, meaning the entire process may be suspect.   The Brand owner will have access to the Trademark Claims service for at least 60 days after a new gTLD is open for registration with the general public following a “Sunrise” period.  The Claims service will provide a warning of potential infringement to any third party attempting to register a domain that matches a trademark registered with the Trademark Clearinghouse.  The Trademark owner will receive an automated alert notification if the domain is nonetheless registered after the warning is sent.

Trademark Claims

Problems.  The Trademark Claims service identifies only identical matches to listed trademarks.  Plural of an identical mark are not considered an identical matches, nor are misspellings.  This means typosquatting will continue (deliberate misspellings) and fall outside the Claims service.   The Trademark owner may find it better to work with its counsel to secure a domain watch service at a comparable cost.
By  Cheryl L. Hodgson

[Originally Published: April 1, 2013] [Updated: March 7, 2014 – Procedure for registering Trademarks in gTLDs]

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