New gTLDs are Coming and Your Company is Eligible for Clearinghouse Protection—Are You Ready?

Currently only 22 generic top-level domains (gTLDs) exist, including the three most well-known: .COM, .NET, and ORG. However, last June the Internet Corporation for Assigned Names and Numbers (ICANN)—the quasi-governmental body responsible for administration of the domain name space—accepted applications for 1930 new ones. Six hundred fifty of these 1930 applications  more than one-third of the total  were for top-level domains corresponding to brands such as .NIKE and .GOOGLE. The remaining applications were either filed for geographic designations such as .LONDON or .NYC, or for generic terms such as .AUTO and .SHOPPING.

Trademark owners such as your company are rightfully concerned about potential misuse of the new top-level domains. ICANN has put procedures in place to ensure companies can register domains in these top-level domains before the general public can (a.k.a. sunrise) or, if domain name registration is not desired, for a limited time after the launch of a registry be warned when another person or company attempts to register a domain name comprising the brand owner’s registered trademark (a.k.a. trademark claims service). Brand owners can record their marks with a Trademark Clearinghouse as part of an effort to ensure domain names in the new top-level domains (e.g., <yourcompanybrand.shopping> do not conflict with registered trademarks).

The Trademark Clearinghouse opens today, Tuesday, March 26, 2013. Here's how it works:

What is The Trademark Clearinghouse?

The Trademark Clearinghouse (Clearinghouse) is the most important rights protection mechanism built into ICANN's new gTLD program. Operators of new gTLD registries will be responsible for implementing certain rights protection mechanisms, supported by the Clearinghouse. The Clearinghouse allows brand owners to record their trademark data into one centralized database, prior to and during the launch of new gTLDs. Once verified, the trademark holder will have fulfilled the basic and most important condition to be able to register their corresponding domain name during the pre-registration “sunrise” period. For a limited period of time—currently 90 days—trademark holders will also have the option to be notified when someone seeks to register a domain name that matches their mark deposited in the Clearinghouse.

Recording your trademark registrations in the Clearinghouse allows you to register domain names before the public can during a sunrise period. If domain name registration is not desired, for a limited time the registry will notify you when someone else tries to register a domain name with your company's trademark.

The following information must be submitted to the Clearinghouse:

• Name of the mark;
• Registration number;
• Registration date [format: YYYY-MM-DD];
• Application number (optional);
• Application date (optional) [format: YYYY-MM-DD];
• Expiration date (optional) [format: YYYY-MM-DD];
• Detailed description of goods and services as registered;
• Status of the Trademark Holder (owner/licensee/assignee);
• Full name of the Trademark Holder;
• Address of the Trademark Holder; and
• Contact information of the Trademark Holder.

The Clearinghouse will accept and verify the following intellectual property rights: (i) nationally or regionally or registered trademarks; (ii) court-validated marks; and, (iii) marks protected by statute or treaty. The verified trademark data will support both trademark claims and sunrise services required for all new gTLDs. In addition, the Clearinghouse may accept and verify other types of marks upon the request of registries. If other types of marks are accepted at a registry's request, additional guidelines concerning these marks will apply.

The Clearinghouse's role does not extend to any intellectual property rights which cannot be represented within the technical limitations of the Domain Name System (DNS), and explicitly does not include patents, designs, know-how or trade secrets. It is important to note that inclusion in the Clearinghouse is not proof of any right, nor does it create any legal rights. The Clearinghouse is a repository of verified rights information.

The Time to Act Is Now

As noted above, the Clearinghouse opens for business today, Tuesday, March 26, 2013. The Clearinghouse charges a fee of approximately $150 per registration to record a registration in the Clearinghouse. Dykema’s flat fee to record your company's registration in the Clearinghouse is dependent on the number of marks sought to be recorded.

If you would like more information, or want assistance in registering your trademarks with the Clearinghouse, please don't hesitate to contact the author of this alert, Eric Fingerhut, at 202-906-8618. 

---

_{As part of our service to you, we regularly compile short reports on new and interesting developments and the issues the developments raise. Please recognize that these reports do not constitute legal advice and that we do not attempt to cover all such developments. Rules of certain state supreme courts may consider this advertising and require us to advise you of such designation. Your comments are always welcome. © 2013 Dykema Gossett PLLC.}