United States: Dot-What? – The New GTLDs Are Coming And It's Time To Understand The Trademark Clearinghouse

Last year, ICANN received 1,917 applications for new Generic Top Level Domains ("gTLDs") - everything from .app to .zip and numerous branded and generic strings in between. (Of the 1,917 applications, 754 are currently in "contention sets" due to similarities, and a few others have been abandoned, so the final number of new strings will be materially lower than the original figure.) To help alleviate the concerns of brand owners in connection with the upcoming onslaught of new strings, ICANN has proposed a so-called "Trademark Clearinghouse" that is scheduled to open on March 26, 2013.

What It Is...And What It Is Not

The Clearinghouse is a centralized database of authenticated trademarks that provides trademark owners with certain opportunities to assist in the protection of their brands in these new domains. The Clearinghouse is not technically one of the rights protection mechanisms (RPMs) associated with the new gTLDs, but rather it facilitates the use of the following primary RPMs:

  • Sunrise Registrations: Marks in the Clearinghouse are eligible for domain name pre-registration during the "Sunrise Period" after a particular string has been delegated to an applicant. During the Sunrise Period, trademark owners have priority to purchase domain names before the general public. Under the current model, the Sunrise Period lasts for a minimum of 30 days.
  • Trademark Claims Services: Marks in the Clearinghouse will also be eligible for the Trademark Claims Service. For at least the first 60 days that domain registration for a particular gTLD is open to the public, a prospective domain name registrant will be notified of a potential conflict between the domain name and an existing trademark registered with the Clearinghouse. The prospective registrant must then represent to the best of its knowledge that the registration and use of the requested domain name will not infringe on a mark in the Clearinghouse. If the domain name is registered, notice will be given to the trademark owner following the registrant's representation of non-infringement and registration of the domain name.

To be clear, the Clearinghouse does not prevent or block others from registering any domain names, even if they match the trademark registered with the Clearinghouse. The Clearinghouse also does not guarantee that you will be able to automatically register second-level domain names for each and every new string, since some strings may be restricted or closed and each domain applicant must still meet the eligibility requirements of each new registry. Inclusion in the Clearinghouse is not proof of any right, nor does it create any legal rights. Failure to submit trademarks into the Clearinghouse should not be perceived to be lack of vigilance by trademark holders or a waiver of any rights, nor can any negative influence be drawn from such a company's decision not to participate in the Clearinghouse.

What

New gTLD Trademark Clearinghouse

When

Opening March 26 (and scheduled to remain open indefinitely)

Why

Benefits include ability to participate in Sunrise registrations and inclusion in a Trademark Claims Service, as well as possible streamline validation for future URS and UDRP enforcement proceedings.

Frequently Asked Questions

What marks are eligible for inclusion in the Clearinghouse? The following marks are eligible:

  • Nationally or regionally registered word marks from any jurisdiction (State registrations not valid.)
  • Any common law word mark that has been validated through a court of law
  • Any word mark protected by a statute or treaty (e.g., Red Cross, Olympics, etc.) Mere applications for registration, even if preliminarily approved (but short of actual registration), are not valid.

What are the limitations of the Clearinghouse?

Sunrise periods and Claims services are limited to exact matches of a domain name to a word mark, and these services will not cover typos or "mark + term" scenarios.

Is any proof of trademark use required?

To purchase second-level domain names before the general public in the Sunrise periods, the brand owner must have demonstrated "proof of use" to the Clearinghouse. Use may be proven by submission of a signed declaration and by a "sample of use." (Samples of use include traditional items such as labels, tags, advertising materials and the like). There is no proof of use required for the Claims service.

What are the costs?

There are two structures to consider, a "basic" and "advanced" cost structure, which may be summarized as follows:

  • Basic Structure: Under the basic fee structure, costs are $150 (one-year registration), $435 (three-year) and $725 (five-year).
  • Advanced Structure: There is also a more complex "advanced" model, whereby trademark owners receive discounts as they earn "status points" from registering or renewing trademarks in the Clearinghouse. For example, each one-year registration is worth 1 point, while a five-year registration is worth 7 points. If one collects 0 to 3,000 points, for example, a one-year registrations drops from $150 to $145, while amassing 25,000 points generates a $15 discount per mark at the one-year registration level, and amassing 100,000+ points drops one year registrations to $95 per mark. Since early stage discounts may not materially affect filing strategies, the advanced model is practical only for those mark owners with exceedingly large trademark portfolios, or, more realistically, for use through third-party "Trademark Agents" who may represent multiple trademark owners, allowing the Agent to aggregate points and pass along some form of blended discount.

Why should I seek a multi-year registration if the Sunrise and Claims periods are open for only 30-60 days after general launch?

It may not be imperative to register marks for three or five years at this time, especially considering that most new strings are generally expected to be delegated within the next year. Another option is to register for an initial one-year term, and then renew for subsequent years as necessary. However, this is a fluid process and change should be expected in the gTLD process, which, on balance, favors multi-year registrations. For example, should batches of strings be delayed, or should ICANN suddenly announce the opening of a second application round, it could prove beneficial to maintain a multi-year registration so as to not miss out on a Sunrise period, or face the administrative burden and costs of reapplying in the not-too-distant future.

Additionally, some prospective new gTLD owners/ registries have stated that they may extend the Claims service beyond the mere 60-day period. Similarly, it is possible (and largely expected) that Clearinghouse registrations may be used in the future for purposes of trademark validation in a Uniform Rapid Suspension (URS) or Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding.

What if I am not interested in Sunrise registrations? Does the Clearinghouse make sense?

Yes. As noted above, brand owners will still be able to benefit from the Claims service. Although it does not serve as a block, notice is nonetheless provided to both the domain name registrant and to the brand owner (upon issuance of the domain name to the third party), which may aid in a company's overall enforcement program.

Additionally, the Clearinghouse may possibly help streamline future URS and UDRP proceedings

What is the deadline, and do I need to rush to register my marks as early as possible?

The Clearinghouse opens on March 26 and is expected to remain open indefinitely. We are still several months away (if not longer) from the first wave of new strings being delegated (going "live"), so it may not be necessary to register immediately (i.e., Day One) with the Clearinghouse. However, it is unclear how much time it will take for the Clearinghouse to verify records, and waiting too long may possibly result in missing a Sunrise registration of interest.

Can more than one party register the same mark?

Yes, multiple identical trademarks can coexist in the Clearinghouse. The Clearinghouse is designed to simply confirm the validity of data and not to make determinations on the substance or scope of rights held by any party.

If two or more identical marks are registered with the Clearinghouse, how does the Sunrise period work?

It is up to each new registry to decide how they want to accept the domain name applications (e.g., first come-first served; auction; or other criteria). At this time, the date of registration with the Clearinghouse has no stated effect or impact on any Sunrise period. However, it is conceivable that one or more new registries may choose to use this date as a possible means to resolve a "tie-breaker" scenario.

What marks should I prioritize for registration with the Clearinghouse?

Multi-branded companies should naturally pay attention to its primary and secondary brands, as well as any marks that may have a history of being infringed. Arguably descriptive (but registered) marks may benefit from the RPMs afforded to marks registered with the Clearinghouse. Examine the list of pending new gTLDS at https://gtldresult.icann.org/application-result/ applicationstatus , and determine if there are any strings that may be of particular interest from a business/marketing standpoint, or from a defensive legal position. Those marks with enhanced relevance to a string may prove to be well-suited for registration with the Clearinghouse.

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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