The Internet Corporation for Assigned Names and Numbers (“ICANN”), the organization charged with coordinating certain technical aspects of the internet including the domain name system, recently created a Trademark Clearinghouse designed to assist trademark holders in protecting their rights in light of the expansion of the Generic Top-Level Domain program.
A Generic Top-Level Domain (“gTLD”) is the portion of a domain name to the right of the dot in an internet address. For example, .com, .org, and .edu are common gTLDs. A second-level domain is the portion of a domain name immediately to the left of the dot. In June 2011, in an effort to increase competition and choice in the domain name space, ICANN launched a program to permit individuals and companies to apply for new gTLDs. ICANN began accepting applications for new gTLDs in January 2012, and has since accepted applications for thousands of new gTLDs. As a result of the expansion of the gTLD program, there will be numerous combinations of second-level and top-level domain names, and thus, the potential for trademark infringement and cybersquatting will increase exponentially.
ICANN has developed a Trademark Clearinghouse which allows trademark holders to submit their trademark data into a centralized database to assist them in protecting their trademarks against potential infringement and cybersquatting. The Trademark Clearinghouse is currently accepting applications. The Trademark Clearinghouse is intended to assist trademark holders in protecting their rights by providing: (a) Sunrise services; and (b) Trademark Claims services.
Sunrise services refer to an initial period of at least 30 days before domain names are offered to the general public during which time trademark holders will have the opportunity to pre-register domain names incorporating their trademarks in any new gTLD. The Trademark Claims service is a notification service mandated by ICANN for all new gTLDs to warn domain name registrants and trademark holders of possible infringements. During the Trademark Claims period, which is a period of at least 60 days following the Sunrise services period, anyone who attempts to register a domain name that incorporates a trademark on file with the Trademark Clearinghouse will receive a notice alerting them to the relevant trademark. If the notified party then proceeds to register the domain name, the Trademark Clearinghouse will notify the trademark holder so that the trademark holder can take appropriate action.
With the first set of new gTLDs expected to become operational over the next few months, trademark holders should consider recording their trademarks with the Trademark Clearinghouse in order to reduce the likelihood of infringement or other violations of their rights. The Trademark Clearinghouse accepts: (a) registered trademarks; (b) marks protected by statute or treaty; and (c) court validated marks. Trademarks may be recorded with the Trademark Clearinghouse for a one, three or five year period with fees ranging from US$150 for a one-year period to US$725 for a five-year period. Trademark holders may apply for entry of their trademarks into the Trademark Clearinghouse by visiting https://secure.trademark-clearinghouse.com/tmch/public/home
If you have any questions about the Trademark Clearinghouse, please contact Beth H. Alter (+1-212-574-1427 or alter@sewkis.com) or Michael Broz (+1-212-574-1272 or broz@sewkis.com). If you have any other questions relating to intellectual property law, please contact Beth H. Alter (+1-212-574-1427 or alter@sewkis.com).alt
