The number of top-level domains, which are currently a handful
such as .com, .net, .org, .gov, .mil, .edu, .mobi, .jobs, and .xxx
will be expanded later this year to well over 1,000, such as
.sport, .eco, .berlin, .web, .art, .android, .auto, .cloud, .film,
.movie, .wedding, and many others. Some will be wide open, like
.com, and others will be restricted to members of a particular
group, company, or community.
The application process has been under way since 2012 and ICANN is
still processing over 2,000 applications for new top-level domains
(gTLD's).
In the past, for certain new domains (i.e. .eu, .asia, and .xxx)
there has been a sunrise period to give trademark owners the first
opportunity at registering their brands before the new domain is
open to the general public. Each sunrise period had its own rules,
forms, and paperwork. The prospect of the cost and effort of
complying with more than 1,000 different sunrise and objection
processes was overwhelming, so ICANN has designated a single
central database for registration of trademarks against all
gTLD's.
ICANN is setting up a central trademark clearinghouse (TMCH) so
that one set of paperwork can be submitted to create a single
database of authenticated trademark rights to protect brands. The
TMCH will provide a central, one-stop process to prepare to sunrise
registration and/or objection to gTLD registrations which conflict
with the registered brands for all sunrises. While there are still
some unresolved questions, the TMCH is nevertheless set to go live
on March 26, 2013. Deloitte will be the validator
of trademarks and IBM will operate the TMCH.
In addition to facilitating sunrise registration of domain names,
the TMCH will also facilitate trademarks claims processes across
over 1,000 new top-level domains. The Trademark owner will be
notified of any new domain registrations which exactly match its
marks in the database. This is important because for domains that
are restricted, the Trademark owner may not be able to qualify to
register and block a mark during the sunrise, but will still want
to know of potentially infringing registrations.
Note that the TMCH does not prevent others from registering your
mark unless you have actually purchased the mark during a sunrise
period. Nevertheless, it reflects a compromise between ICANN and
trademark owners and is the best defense against the roll out of
hundreds of new domains.
All trademark owners should be prepared to register their key
brands in the TMCH in order to best prepare for the vast expansion
of the gTLD space.
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.
