ICANN, the International Corporation for Assigned Names and Numbers, has taken another step in expanding the number of sanctioned top-level web domains (TLD). Domain extensions such as .nike, .canon and .bank may now join the already existing TLDs, including .com, .org, .net, .biz and .info, and are expected to be activated within the coming weeks. ICANN has launched the Trademark Clearinghouse (TMCH), a central repository designed to help brand owners protect their marks from the many forms of cyber abuse, such as cybersquatting, when the new generic top-level domains (gTLD) come online.
The TMCH was essentially created in response to the fact that nearly anything may become a TLD. ICANN intends the TMCH to be a "foundation for brands to protect their trademarks against potential infringement." Accordingly, creating and maintaining a single database of validated trademarks will provide a rights protection mechanism for tracking trademark ownership and claims. Registration of trademarks with the TMCH will allow the rights holder the following benefits:
- Priority Registration of Domain Names During a Sunrise Period – Prior to the launch of a new extension, the trademark owner may reserve domain names (the word or phrase before the extension) based on those trademarks it has registered with the TMCH.
- Notification of Registered Names – The trademark owner will be alerted if a third party tries to register the mark as a domain name. It will then be incumbent upon the trademark owner, working with trademark counsel, to decide whether and how to enforce its rights against the applied-for registration.
- Trademark Claims Service – In a dispute over a domain name registration, the trademark owner may rely on the marks registered with the TMCH.
Only those trademarks registered with the TMCH will be eligible to participate in sunrise period notifications and receive domain name registration notifications.
If you have any questions about this Alert or if you would like more information regarding proactively protecting your marks on the new gTLD system, please contact Laurie H. van Löben Sels, any member of the Intellectual Property Practice Group, any member of the Trademarks, Copyrights, Trade Secrets and Unfair Competition Practice Group or the attorney in the firm with whom you are regularly in contact.
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