As we all know, there are already a handful of generic
top-level domain names (“gTLDs”) in existence, such as .COM, .CO, .BIZ, .NET,
.ORG, .EDU and .XXX, as well as many country code domains, including .CN
(China), .JP (Japan), .PL (Poland) and .EU (Europe). As you may also know, Internet pirates (a/k/a domain name
squatters) seek to plunder the trademarks of others by using them in domain
names for monetary gain, including the siphoning of Internet traffic from brand
owners’ own websites and holding them for ransom. Many brand owners have dedicated significant time and expense
over the past decade (and continue to do so) to defend against these pirates in
an effort to control unauthorized use of their trademarks on the Internet,
including use of those trademarks in domain names. With the imminent launch of over 1000 new gTLDs over the
next year (possibly 20 per week), those fights may have only been primers for
what is about to come for some brand owners.
As of today, there have been over 1,900 applications filed
by third parties for new gTLDs, including .ACCOUNTANTS, .ART, .CONSTRUCTION,
.ENGINEERING, .FURNITURE, .SALON, .TICKETS, .THEATER, .TIRES, and so on. To see the full list, click here.
The launch of these new gTLDs has been delayed for several
years due to brand owners’ and trademark practitioners’ concerns of rampant
trademark hijacking and domain name squatting – and the expense and time to
defend against such activities. In an
effort to minimize those concerns, the Internet Corporation for Assigned Names
and Numbers (“ICANN”) (the entity created to oversee and coordinate
domain names) created, what is known as, the Trademark Clearing House
What is the Trademark Clearing House (“TCH”)?
The TCH is a global trademark registry for brand owners to
register their trademarks. TCH
providers will verify trademark rights and data and maintain a database with
the verified trademark data.
Two primary benefits of the TCH are that trademark owners
that register with the TCH would receive priority with respect to reserving new
gTLDs during sunrise periods and receive claims notifications of third parties
seeking reservation of domain names that incorporate their trademarks.
What Trademarks Are Eligible?
Trademarks that (1) are nationally or regionally registered,
(2) have been recognized and validated through a court or other judicial
proceeding and (3) are protected by statute or treaty may be registered with
One important aspect of the TCH is that only exact
matches of trademarks may be registered, near exact or phonetically
equivalent marks (to protect against “typo squatting”) are not eligible for
What are the Costs for Registering Trademarks with the
The cost to record marks with the TCH depends upon how many
years the reservation is for and how much an agent charges for the
recordal. For a one-year recordal, the
registration fee charged by ICANN is $150 per trademark.
What are Sunrise Periods?
Sunrise periods will allow brand owners that have registered
their trademarks with the TCH to register new gTLDs corresponding with their
marks before reservation periods open to the general public. The aim of sunrise periods is to allow brand
owners to “pre-register” their domain names in an effort to keep them away from
domain name squatters.
If a trademark owner plans to register during a sunrise
period, it must first submit proof that the subject mark is currently in use,
which includes a signed declaration and a sample of how the mark is actually
Should there be competing domain name requests during a
sunrise period, ICAAN ultimately wins as the parties would need to “duke it
out” at auction. Highest bid wins.
What are Claims Notification Periods?
Trademark claims notification periods follow sunrise periods
and run for at least 90 days. Anyone
seeking reservation of a domain name that incorporates a trademark owner’s mark
that has been registered with the TCH will receive notification that the
reservation request may violate third party trademark rights. If the party proceeds with the registration
after such notification, a trademark owner would then receive notification that
someone has sought registration of a domain name incorporating its mark.
Once a trademark owner receives such notification it may
decide whether to object to the reservation by utilizing the Uniform Rapid
Suspension system, a feature of the new gTLDs system, or take other action.
What Should Brand Owners Do?
The first step for brand owners is to review the list of
applied-for gTLDs and decide if there are any domain names of interest (at
least those that correspond to their industry, i.e., Goodyear.tire).
If a brand owner intends to reserve certain gTLDs
corresponding to certain of their trademarks (i.e., for its actual use or as
defensive registrations) it should register those trademarks with the TCH. Those brand owners should then monitor for
sunrise periods corresponding to the interested gTLDs to seek reservation of
the subject domain name(s).
Brand owners not planning to reserve domain names that
correspond to the new gTLDs, likely need not file their trademarks with the TCH
- although reserving top tier marks now is probably a good idea in the event
those plans change.
If brand owners are only interested in monitoring third
party reservation of domain names that correspond to their trademarks, a better
alternative to registering with the TCH is to order a domain name watch from a
qualified service provider. The domain
name watch would monitor for any domain name reservations that not only include
exact spellings of watched marks but also misspellings and phonetically similar
marks. A domain name watch is
relatively inexpensive – only about $250 per year per trademark.
Although there is much to
consider, it is not time to panic.
However, it is time to
understand that there are pirates ready to plunder the trademarks of others
with hopes of financial gain. Although
many trademark owners may have bigger fish to fry than worrying about Internet
pirates and new gTLDs, brand owners should still take a moment to consider
their strategy for defending against potential online attacks to their valuable
treasures (a/k/a/ their trademarks and brands).
Related TM Titan Blog Posts:
Essential Rules for Internet Brand Names