The Trademark Clearinghouse (TMCH) What You Need To Know

Applications for new gTLDs were filed in 2012 in the following categories:

• Over 80 applications were community-based (.doctor, .gay);
• Over 100 applications were for internationalized domain names (alphabets other than the Latin alphabet, e.g., Hangul, Cyrillic, Arabic);
• 34% of all applications were for brands (.CANON, .LOREAL); and
• 53% of the applications were generic (.app, .baby, .bank).

ICANN has implemented the Trademark Clearinghouse (TMCH) as a method of protection against infringing 2nd level domain names (to the left of the dot, client@.brinkshofer). That registration of domain names will begin no earlier than April 2013, once the accepted gTLDs are live.

As of March 26, 2013, the TMCH performs two functions:

• Operation of the database for the pre-launch Sunrise registrations that the trademark owner may use for itself; and
• Validation and authentication of the rights submitted by trademark owners to stop the registration of infringing domain names in post-launch claims.¹

WHAT ARE PRE-LAUNCH SUNRISE REGISTRATIONS?

Once operational, each new gTLD registry must provide a Sunrise registration process with the following functions:

• The Sunrise period is a minimum of 30 days prior to the launch of domain name registrations under the new gTLD by the public;
• TMCH listed marks serve as basis for Sunrise registration;
• Trademark owners with marks registered with the TMCH will receive notice of identical Sunrise registrations and subsequent registrations during the general registration period; and
• Proof of use of the trademark that is the basis for the Sunrise registration must be submitted.

WHAT ARE POST-LAUNCH TRADEMARK CLAIMS?

For those infringing domain name registrations filed post-launch of the domain name registry under the new gTLD registrations, ICANN has created the Trademark Claims Service with the following functions:

• This service recognizes all marks listed in the TMCH.
• If an identical domain name is registered under any of the new gTLDs, this service will contact the potentially infringing applicant for the domain name and the trademark owner with a mark on the TMCH.
• The applicant will be informed of the scope of the rights held on the TMCH.
• The trademark owner will be notified that an identical domain name registration has been completed.
• This contact period lasts for 60 days during a launch of domain name registrations.
• No proof of use is required.²
• The TMCH will NOT block domain name registrations.

WHAT ARE THE FEES?

• $145 for one year plus attorney fees;
• Volume discounts may be available.

WHAT ARE YOUR BENEFITS FROM TMCH REGISTRATIONS?

The TMCH will give the following benefits to Brinks' trademark clients:

• Monitoring of identical domain name registrations for the new gTLD registrations;
• A centralized database for registration of marks to be protected against infringing domain name registrations;
• A cost-effective platform for Sunrise registrations; and
• Data for the Trademark Claims service which a trademark owner may file against an infringing domain name registrant.

WHAT ARE POSSIBLE STRATEGIES?

• Determine if registrations are needed with the TMCH;
• Determine how long you need to register your marks;
• Determine what marks are used in your key markets;
• Determine which trademarks are essential to your online presence; and
• Review those trademarks which you registered to block .xxx registrations, if any, for relevance now.
• Determine if a domain name watch service is needed or should be expanded if already in place;
• Determine which Sunrise registrations are essential to serve marketing and business needs and the subsequent use of such registrations;
• Watch for changes in registry filings on crucial gTLDs;
• Determine what the competition is doing; and
• Update entire domain name portfolio management policies for filing, renewal, and enforcement purposes.

Footnotes

^{1 Applicant Guidebook, Trademark Clearinghouse, June 4, 2012, at 1-6, www.icann.org/newgtlds}

^{2 Applicant Guidebook, Id., at 5-6.}

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Hofer Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Hofer Gilson & Lione lawyer.