Feb 03 | 2014

Client Advisory: Using the New Trademark Clearinghouse to Combat Cybersquatters

We are entering a new frontier for domain names, and opportunities and risks abound. This new frontier is being forged by the rollout of new “generic top-level” domain names, or “gTLDs” (these are the identifiers that appear to the right of the dot in a domain address – such as “.com” or “.edu”). The purpose of this Client Advisory is to inform you of a powerful new tool at every trademark owner’s disposal that can help protect your brands in this growing cyberland of opportunity.

The new gTLDs hitting the market will take many forms–some will be generic words like “.computer” while others will be recognizable trademarks like “.nike.” This means that in addition to “dunnerlaw.com,” we could register “dunnerlaw.law” or “dunnerlaw.attorney” or any other possibility presented by a new gTLD as long as the portion we seek to register (dunnerlaw) does not infringe on anyone’s trademark rights. This rollout of expanded domain options will create new opportunities for businesses, but with opportunities comes risk. Because of the potential for risk, the Internet powers-that-be created the Trademark Clearinghouse (“TMCH”).

The TMCH is a voluntary system by which trademark owners can record their registered marks to a central repository which the new gTLD operators will use to help manage domain rights. The primary benefits to using the TMCH are:

  1. Participation in a claims service. If an unauthorized user attempts to register your identical mark in one of the new gTLD extensions, that user will receive a warning informing them of your trademark rights. You, as the mark owner, will also receive a notice of their attempted registration. Although this claims service will not prevent the unauthorized registration (you will still have to take action to block or reclaim the domain), you will at least be put on notice of another’s attempted registration and use of your mark. Such use might be considered an infringement, and the notice you receive from the registrar will help to monitor unauthorized uses of your mark.
  2. Early registration option in the new gTLDs. Only owners of registered marks that have been recorded in the TMCH can participate in early domain registration periods (known as “sunrise periods”) before the general public gets a chance to register domains in each new gTLD. These sunrise periods should greatly increase the chance of successfully securing a new domain before it is available to the general public.

Some of these sunrise periods have already begun for the earliest of the newly introduced gTLDs, and each sunrise period will occur on a rolling basis as its corresponding gTLD hits the market. If you are interested in learning more about the TMCH and the new gTLDs, please contact Adam Sikich at 202-298-6322 or asikich (at) dunnerlaw.com.