There has been much in the press, often misleading, about the new generic top level domains (gTLDS) which are going to be released shortly. A particular point of confusion has been the Trademark Clearinghouse (TMCH) launched earlier this year by the Internet Corporation for Assigned Names and Numbers (ICANN).
The TMCH has two primary functions;
- A “Sunrise” registration service which allows members of the TMCH to register a domain name that corresponds to their registered mark at least 30 days before the relevant gTLD becomes available to the public.
- Access to a “Trade mark Claims” service which notifies a trademark holder if a third party applies for a domain that matches their mark.
Fees for joining the TMCH range from $95 to $150 per year per trade mark although there will be discounts depending on the number of trade marks recorded and the duration of such registrations. For many brand owners however the “Sunrise” service will be of less importance than the “Trade mark Claims” service because of the heavy cost of registering gTLDs.
The “Trade mark Claims” service is intended to work as follows. A potential domain name registrant will get a warning notice when attempting to register a domain name that matches a trade mark term in the TMCH. If, after receiving and accepting the notice, the domain name registrant continues, the trade mark holder receives a notification of the domain name registration so that they can take action.
Concerns with the TMCH program are cost, the lack of an automatic block thereby allowing domain names to be registered that match a trade mark term, and the fact that a match must be identical for a notification to issue. Nevertheless, registering of important marks is to be recommended at least during 2014 when the majority of new gTLDs are expected to become available. Brand owners should however continue to monitor separately particularly for non-identical but closely similar names.
In conclusion, two practical steps which brand owners should take are:
- When there is a finalised launch date for the first new gTLDs, consider registering important brands with the TMCH for at least the first year of operation;
- Build into any regular trade mark watches, a periodic review of new gTLDs.
If you would like advice on any aspect of the new gTLD regime, please contact an attorney in our trade mark team or marketing.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.