ICANN’s Trademark Clearinghouse to Open March 26, 2013 – Should You Participate?

Owners of federally registered trademarks will have the opportunity to register their marks in the much-anticipated Trademark Clearinghouse (“TMCH”) starting on March 26, 2013, according to a February 25 announcement by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The TMCH will be ICANN’s primary mechanism for protecting pre-existing intellectual property rights in connection with the launch of potentially unlimited generic top-level domains (“gTLDs”). The new gTLDS will be introduced on a rolling basis, with the first expected to debut in late spring.

Registration of trademarks in the TMCH is intended to provide two primary advantages:

1. Sunrise Period – Registrants in the TMCH will have an exclusive opportunity to register domain names in each new gTLD before registration is open to the general public. The domain names registered must correspond with marks the registrant has registered in the TMCH. The length of the Sunrise Period will be determined by the individual registries but will be a minimum of 30 days.
2. Claims Notification – TMCH registrants will receive a notification when someone registers a domain name identical to the trademark registered in the database (exact matches only). The registries are only required to offer this notice service for the first 60 days after each new gTLD opening.

The cost of registering a trademark with the TMCH will be $150/year, with discounts available for multi-year registration and for bulk registrations. Registration will take place online at http://trademark-clearinghouse.com.

Comment. If the new gTLDs are widely adopted, the possibility exists that there will be a growth of online infringement, which may make it advisable for trademark owners to register all their trademarks in the TMCH. However, some companies have hundreds of trademarks, and this course of action may result in exorbitant fees. Notably, the Claims Notification service will only inform TMCH registrants about potentially infringing registrations, rather than provide any resolution service. Accordingly, registrants will need to determine, on a case-by-case basis, whether and how to act against registrations used for the hosting of pay-per-click advertising and other infringing activities.

The TMCH, as well as ICANN and the domain name registration service providers that finance ICANN’s budget, have an interest in the stimulation of new domain name registrations. It is not clear whether this interest is shared by trademark owners, consumers, law enforcement or other groups outside the domain name registration service industry. For example, a 2012 Pew Internet survey indicated that 92% of Internet users utilize search engines, with 59% doing so on a regular basis.

If your company is interested in registering or reserving particular domain names in a new gTLD, the TMCH does offer the benefit of early registration through the Sunrise Period service. The defensive registration of domain names is only advisable for the most valuable trademarks and should be evaluated on a case-by-case basis. We recommend enforcement actions against persons who register domain names incorporating and imitating trademarks and against the domain name registration service providers that collaborate with them to “monetize” others’ trademarks. Based on the limits in scope and availability of the Claims Notification service, the TMCH should be viewed only as a supplemental service to “traditional” watch services, such as those run by CT Corsearch and DomainTools. Please do not hesitate to contact us to discuss your individual business needs.