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Intellectual Property Update: The New gTLD Trademark Clearinghouse Opens

AUTHOR(S): Sharon Daly
PRACTICE AREA GROUP: Intellectual Property
DATE: 06.03.2013

A Stitch in Time…..The New gTLD Trademark Clearinghouse Opens.  Have You Planned Your Brand Protection Strategy?

The start of the new gTLD system is upon us.  The Internet Corporation For Assigned Names and Numbers (“ICANN”) anticipates making the first of around 1900 new gTLDs available in mid-2013.  Release will happen on a staggered basis with the first likely to be Chinese followed by other foreign language domain names and then gTLDs in English that have no competing bidders.  A full list of the proposed new gTLDs is set out on the ICANN website.

There are significant consequences in all of this for brand owners and the likelihood of a very substantial spike in cybersquatting.  After much debate and negotiation, the Trademark Clearinghouse has been developed to help alleviate some of the risks.  The Trademark Clearinghouse will enable brand owners to register their trade marks to a centralised database which will facilitate both a “Trademark Claims” service and a “Sunrise Service”.

The “Trademark Claims” service will provide would-be registrants in a new gTLD with notice of a prior trade mark owners’ rights and if registration proceeds will provide notification to the trade mark owner. The “Sunrise Service” will offer pre-existing trade mark owners the right to priority registration of an identical registered domain name in the new gTLD space.

While both services are important stepping stones towards limiting cyber-squatting, because of the identical match requirements between trade marks and the prospective domain names, the efficacy of the system to prevent many types of cybersquatting is limited.  As a result and to help combat extremely clear cut examples of cybersquatting (for example “typosquatting”) there is also planned to be a new fast-track, cost effective system called the “Uniform Rapid Suspension System” (“URS”) which will operate as a complement and in addition to the existing Uniform Domain Name Dispute Resolution System (“UDRP”).  Registration in the Trademark Clearinghouse will also assist future claims under the URS.

ICANN has just announced that the Trademark Clearinghouse will go live on 26 March, 2013.  It is extremely important that brand owners plan to protect their brands against a likely explosion of future cyber-squatting once the new gTLD’s are released. Registration in the Trademark Clearinghouse is the first vital step that trade mark owners need to take.  Although brand owners may register themselves, there are detailed requirements and procedures which must be followed in order to prove rights and to obtain a successful registration.

We can advise on requirements, protection strategy and costs and assist you in the filing process or facilitate filings upon your behalf. 


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