Australia: ICANN's Trademark Clearinghouse has launched. Have you protected your trade marks?

Key Points:

With the upcoming release of so many new gTLDs, trade mark owners may find cybersquatting becoming a more substantial issue again.

With the introduction of new generic top level domains (gTLDs) comes a renewed threat of cybersquatting. Trade mark owners who wish to protect their trade marks from being registered by other people as second level domain names (2LDs) for the new gTLDs should consider having their trade marks registered with the new Trademark Clearinghouse.

The new top level domain scheme

As we previously reported, the Internet Corporation for Assigned Names and Numbers (ICANN) is expanding the number of gTLDs. This will dramatically increase the number of existing gTLDs (such as ".com") and give rise to gTLDs like ".sports", ".food" or ".insurance".

In July 2013, ICANN will issue approximately 1000 new gTLDs (with further new gTLDs to be issued in future). There will be an initial registration period for each new gTLD which will allow organisations to apply to register their trade marks as 2LDs, such as or www.adidas.sports.

Trademark Clearinghouse

As part of ICANN's program to expand the number of gTLDs, the Trademark Clearinghouse has been set up as a global database to assist trade mark rights holders. Trade mark owners can now register their trade marks with the Clearinghouse and receive two services from the Clearinghouse:

  • Sunrise Service which gives a trade mark owner an opportunity to register in a new gTLD a 2LD matching its trade mark, before the general public. The Sunrise Service is provided for 30 days after the release of a new gTLD; and
  • Trademark Claims Service which provides a warning notice to any person who attempts to register a domain name which matches a trade mark registered with the Clearinghouse. If the person still registers the domain name, the Clearinghouse notifies the trade mark owner. The Trademark Claims Service is provided for 90 days after the release of a new gTLD to the public.

Registration requirements

Trade marks that can be registered with the Clearinghouse include registered trade marks and unregistered trade marks that have been validated by a court. The new scheme is broader than just word marks – it also covers combined word and graphic marks, with the graphic element being disregarded for the purpose of assessing whether a 2LD is a match.

Applications to register trade marks with the Clearinghouse require certain information to verify the trade mark, including ownership details. A declaration of use and a sample of proof of use are also required for the Sunrise Service.

The fees for registering a single trade mark with the Clearinghouse are $150 for one year, $435 for three years and $725 for five years.

Dispute resolution

Although the Trademark Claims Service provides a notice to a trade mark owner that another person has registered a 2LD which matches the trade mark registered with the Clearinghouse, it won't prevent that other person from registering that 2LD.

If a trade mark owner wants to recover a domain name registered by someone else, it must use one of the available external dispute resolution avenues, such as the Uniform Domain Name Dispute Resolution Policy or legal action. The Clearinghouse does not have its own dispute resolution process.

Next steps

With the upcoming release of so many new gTLDs, trade mark owners may find cybersquatting becoming a more substantial issue again. Trade mark owners should consider whether any of the new gTLDs are likely to be relevant to their business and, if so, register their trade marks with the Clearinghouse to take advantage of the Sunrise Service and the Trademark Claims Service.

You should ensure that any future marks you create are also registered with the Clearinghouse. We suggest you review your IP management process to ensure registration of new marks is flagged as an action, so they are protected from the start.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this bulletin. Persons listed may not be admitted in all states and territories.

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