The Trademark Clearinghouse, a rights-protection component of
ICANN's ambitious plan to expand the domain name system,
recently began accepting submissions from trade-mark owners. The
Clearinghouse, which is operated by Deloitte, is a centralized
database of trade-mark information and will play an important role
in helping to protect against online trade-mark abuse and domain
In June 2011, ICANN approved a plan to allow the creation of new
generic top-level domains or "gTLDs". As a result, in
addition to the familiar .com, .net and .org, it will soon be
possible to apply to register domain names within numerous new
gTLDs, such as .CLOTHING, .GREEN or .BLOG. The first new gTLD
registries are expected to open by the end of 2013.
Past experience has shown that where new top level domains are
introduced the potential for trade-mark abuse is high; the last
thing a trade-mark owner wants is for its trade-mark to be
registered as a domain name by a competitor or by someone else
hoping to profit from traffic generated on the strength of the
The Clearinghouse offers trade-mark rights holders the
opportunity to obtain some protection for their trade-marks as the
new gTLDs become available. Companies who have their trade-mark
rights accepted and verified by the Clearinghouse will have the
ability to register those trade-marks as domain names during
"sunrise" priority registration periods offered by new
gTLD registries, and will receive a notification when exact-match
domain names are registered during the first 60-90 days of general
availability registration. While registration with the
Clearinghouse does not guarantee access to sunrise registration
with each new gTLD registry, trade-marks not registered with the
Clearinghouse will not be eligible. Importantly, the Clearinghouse
does not prevent registration of a domain name that matches a
trade-mark in the Clearinghouse, it merely issues a notification to
the trade-mark owner after the domain name is registered.
The Trademark Clearinghouse Guidelines describe the types of
trade-mark rights that will be accepted and verified and the
requirements for registration.1 Generally, the
Clearinghouse will accept and verify the following trade-mark
rights: (i) nationally or regionally registered trademarks; (ii)
court-validated marks; and (iii) marks protected by statute or
Requirements for registration with the Clearinghouse differ
depending on the nature of the mark (whether legitimized by
registration, court or statute). In all cases, the name of the mark
is required, along with information, such as a registration number,
that confirms validity. Prospective registrants will also need to
supply information regarding the duration of a mark's validity,
and the nature of the goods and services in association with which
the mark is protected. For applicants with registered trade-marks
seeking to make use of sunrise registration privileges, proof of
use of the trade-marks will also have to be submitted.
McMillan LLP counsels clients in all aspects of branding and
domain name matters and can help brand owners navigate this
exciting and complex expansion of the international domain name
system. For further information, please contact a member of
McMillan's intellectual property team.
1. Deloitte, Trademark Clearinghouse Guidelines, Version
1.0 (February 2013).
The foregoing provides only an overview. Readers are
cautioned against making any decisions based on this material
alone. Rather, a qualified lawyer should be consulted.
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