The Internet domain name system has expanded dramatically with the introduction of 1000+ new domains, such as .shop, .hotel, .eco, .green, in addition to the already familiar .com, .net, .org, .biz, .info, etc. Trademark owners can reduce cybersquatting of their trademarks in these new domains by taking advantage of the Trademark Clearinghouse (TMCH).
The TMCH is a centralized database devised by the Internet Corporation for Assigned Names and Numbers (ICANN) to protect brands and intellectual property rights as part of the new generic Top Level Domain (gTLD) program. Although not mandatory, the TMCH can benefit brand owners in two ways:
Each new gTLD will have a pre-launch phase during which right holders in the TMCH will have priority to register domain names corresponding to their marks in the new gTLDs. For example, the owner of the trademark AMAZON can register amazon.shop before others. Once a trademark is registered with the TMCH, trademark holders can use their active registrations for all new gTLD Sunrise Periods.
Trademark holders who register their trademarks with the TMCH will be provided a trademark claims service, for a minimum of 90 days from the start of general/public registration of a new gTLD. The TMCH will notify a registered right holder about any new domain registration that is identical to their active mark(s) in the TMCH. It also notifies a potential registrant when its proposed domain name conflicts with a registered right, requiring the domain registrant to acknowledge the notice.
Although these TMCH services do not provide absolute protection from infringement, they will allow the holder preliminary monitoring advantages.
Registration of trademarks in the TMCH requires:
- Submission of an eligible mark, i.e. those which are nationally or regionally registered in any country/jurisdiction, select court validated common law marks and/or marks protected by statute or treaty.
- Submission of “Proof of Use”, including labels, tags or containers from a product and/or advertising and marketing materials (such as brochures, pamphlets, catalogs, product manuals, display, signage, press releases, etc.). Note that “Proof of Use” is only mandatory for marks being used for Sunrise services.
- The submitted mark must comply with the rules of matching:
|Registered Trademark||Variation Protected in TMCH|
|Sample Mark||samplemark and sample-mark|
|Sample @ Mark||sampleatmark and sample-mark and samplemark|
|Sample & Mark||sampleandmark and sample-mark and samplemark|
|Sample*Mark||samplemark and sample-mark|
|Sample Marks||samplemarks and sample-marks|
The following are not eligible for submission to the TMCH:
- trademark applications
- trademarks registered by a city, state, province or sub-national region
- international trademark applications made via the Madrid system unless the underlying basic trademark registration has national effect
- registered trademarks which were subject to successful invalidation, cancellation, opposition or rectification proceedings
- marks starting with or containing a dot
- any IP rights that can not be added to the DNS (patents, images without words, etc.) or mark containing characters that are not DNS valid
- a registered trademark that includes a top level domain extension
For domain strings previously registered as abusive and included in a successful UDRP complaint, brand owners are eligible to submit up to 50 confusingly similar adjudicated strings.
Upon the successful validation and approval of a trademark and its entry into the TMCH, the trademark holder will be supplied an exclusive Signed Mark Data file – essentially a password providing access to the Sunrise Period of any/every new open gTLD launch.
Trademark registrations with the TMCH will be valid for one, three or five years and may be re-validated once per year or registered for multiple years in advance.
The Trademark Clearinghouse will not prevent brand infringement, cybersquatting or brand abuse. It will instead provide limited protection from and assistance with infringing domain registrations. The TMCH offers a simpler method of verifying rights for new gTLD registrations, and will afford trademark holders the opportunity to reduce the administrative and monetary costs associated with the new gTLD program.