The trademark clearinghouse opens, offering brand owners some rights protection during domain name expansion 

publication 

May 2013

Intellectual Property Bulletin/Lexology
Alexandra Kirschbaum, student at law

The Trademark Clearinghouse, a rights-protection component of ICANN's ambitious plan to expand the domain name system, recently began accepting submissions from trade-mark owners. The Clearinghouse, which is operated by Deloitte, is a centralized database of trade-mark information and will play an important role in helping to protect against online trade-mark abuse and domain name cybersquatting.

In June 2011, ICANN approved a plan to allow the creation of new generic top-level domains or "gTLDs". As a result, in addition to the familiar .com, .net and .org, it will soon be possible to apply to register domain names within numerous new gTLDs, such as .CLOTHING, .GREEN or .BLOG. The first new gTLD registries are expected to open by the end of 2013.

Past experience has shown that where new top level domains are introduced the potential for trade-mark abuse is high; the last thing a trade-mark owner wants is for its trade-mark to be registered as a domain name by a competitor or by someone else hoping to profit from traffic generated on the strength of the trade-mark.

The Clearinghouse offers trade-mark rights holders the opportunity to obtain some protection for their trade-marks as the new gTLDs become available. Companies who have their trade-mark rights accepted and verified by the Clearinghouse will have the ability to register those trade-marks as domain names during "sunrise" priority registration periods offered by new gTLD registries, and will receive a notification when exact-match domain names are registered during the first 60-90 days of general availability registration. While registration with the Clearinghouse does not guarantee access to sunrise registration with each new gTLD registry, trade-marks not registered with the Clearinghouse will not be eligible. Importantly, the Clearinghouse does not prevent registration of a domain name that matches a trade-mark in the Clearinghouse, it merely issues a notification to the trade-mark owner after the domain name is registered.

The Trademark Clearinghouse Guidelines describe the types of trade-mark rights that will be accepted and verified and the requirements for registration.1 Generally, the Clearinghouse will accept and verify the following trade-mark rights: (i) nationally or regionally registered trademarks; (ii) court-validated marks; and (iii) marks protected by statute or treaty.

Requirements for registration with the Clearinghouse differ depending on the nature of the mark (whether legitimized by registration, court or statute). In all cases, the name of the mark is required, along with information, such as a registration number, that confirms validity. Prospective registrants will also need to supply information regarding the duration of a mark's validity, and the nature of the goods and services in association with which the mark is protected. For applicants with registered trade-marks seeking to make use of sunrise registration privileges, proof of use of the trade-marks will also have to be submitted.

McMillan LLP counsels clients in all aspects of branding and domain name matters and can help brand owners navigate this exciting and complex expansion of the international domain name system. For further information, please contact a member of McMillan's intellectual property team.

1 Deloitte, Trademark Clearinghouse Guidelines, Version 1.0 (February 2013). 

by Alison Hayman and Alexandra Kirschbaum, student at law

a cautionary note

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.

© McMillan LLP 2013