ICANN (the entity that essentially controls the worldwide domain
name system) is in the final stages of processing approximately
1,900 applications for new gTLDs (generic Top Level Domains –
like ".com") many of which are expected to come online in
2013. Some of these applications are private brands, like .ford and
.audi, while some generic gTLDs will likely only be used only by
the owner – e.g. Safeway and Walmart have both applied to own
.grocery. Many are also non-english names, and/or in non-western
script, like (Samsung).
Excluding all the private and esoteric new domains, that still
leaves 1,000+ non-private, new, english-language gTLDs, including,
to name a few: .eco, .bank, .hotel, .apartments, .app,
.porn, .art, .beer, .wtf, .sucks, .lawyer, .doctor, .engineer,
.soccer, .university, .gay, .dog, .forsale, .education, .giving,
.hockey, .mba, .medical, .school, .science, .sex, .soccer,
.sports, .technology – and the list really
does go on and on (and on).
Businesses and other organizations may want their own
trademarked names and brands registered as domains under the new
gTLDs, or may wish to prevent their trademarks from being
registered. For example, a famous brand like Adidas®
may wish to register ADIDAS.shoes or ADIDAS.soccer, but prevent
registrations with negative connotations.
The Trademark Clearinghouse
For registered trademark owners, a complex priority system has
been created by ICANN to facilitate some limited protection of
registered trademark rights in the brave new gTLD world. Using this
priority system requires a trademark owner to submit its registered
trademarks for "pre-clearance" through a new
international agency called "The Trademark Clearinghouse"
("TMCH"). Note that generally only the word
elements of registered trademarks can
benefit from this priority system.
Submitting your registered mark to the TMCH achieves two goals.
First, it gives you priority to obtain a domain name registration
for your exact trademark in any new gTLD's
"sunrise period" (i.e. before the general public can grab
domain names in that new gTLD). This of course only applies when
the trademark owner wants to register a new domain name. Using our
example, Adidas would benefit from priority registration for
ADIDAS.soccer if it submitted its trademark to the TMCH.
The second function of the TMCH is to give notices regarding
pre-cleared trademarks in its system, where someone other
than the trademark owner is obtaining a domain name
matching the trademark owner's mark. In this case, a person
attempting to register ADIDAS.shoes would receive a notice, and
Adidas would simultaneously get a notice of the attempt to register
the ADIDAS mark as a domain name. This notice only occurs during
the initial 60 day "trademarks rights period" following
the sunrise period, after a new gTLD opens up for registration of
Should the average business give a .crap about
this? Even with TMCH registration, you will still be on your
own for all costs of new domains, or to stop infringers.
However, if you do perceive the new gTLDs could be important
marketing tools for your business, the sunrise period priority will
be a useful advantage to get the domain names you want to enhance
your brand. Also, knowing where your trademark is being
registered as a domain name by others is good market intelligence,
even if you choose to take no action to stop it.
Do you have a federally registered trade-mark? If in
doubt, contact us, or your trade-mark agent to confirm this.
Consider the risks: what would happen if an exact match of that
registered trade-mark was registered in a domain name, under one of
the new gTLDs. Consider your industry and the generic domain names
that correspond to that industry.
If you decide that additional protection is warranted in light
of the risks, contact us to review your marks, and the costs and
benefits of using the TMCH.
Our IP&T Group can assist to submit your mark to the
We can also assist to monitor the launch of specific domains
that you have identified, and establish a notification system for
the sunrise period and trademark rights period for those
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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