2013-04-18

Your trademark strategy for the launch of hundreds of new internet extensions?

With the launch of hundreds of new internet extensions (new GTLDs) planned this year, trademark owners will have to ask themselves the question how to protect their trademarks, amongst others against cybersquatting.

ICANN has established a process, called the “TradeMark Clearinghouse” (TMCH), which allows trademark owners:

1.    To input the data of their trademarks in a centralized database.
2.    To participate in priority registrations (Sunrise Periods) of all new extensions
3.    To be alerted (within a certain period of time) if a third party attempts to register a domain name identical to the mark.

The costs taxes for inserting a trademark in the TradeMark Clearinghouse are of approximately 350 € / year.

However, there are several elements of this TMCH, which limit its use:

1.    Alerts are limited to domain names identical with the trademark concerned. A minor amendment (adding a letter, a hyphen, etc.) suffice to avoid an alert.
2.    Receiving an alert does by no means hinders a third party to register the domain name. You will need to file URS-proceedings (similar to UDRP-Proceedings, i.e. specialised, specific arbitration proceedings for domain names) to obtain the control over the domain name concerned.
3.    The alert system will remain in force 90 days after the new extension has been launched. It is unclear whether the TMCH will remain in force afterwards or whether the registries will propose alternatives.

When is it interesting?

1.    When you want to remain updated of third parties registering domain names identical with your trademark in new extensions (during the Sunrise Period). Such will allow you to immediately take action, if necessary.

2.    When you are potentially interested in registering domain names corresponding to your trademark in one or several new extensions. Once you have inserted your trademark in the TMCH database, you will be albe to apply during the Sunrises Period in all new extensions, without having to prove each time the existence of your rights.

What can we do for you?

1.    Analysing your trademark portfolio in order to determine the best strategy for inserting your trademark rights in the TMCH database.

2.    Determining the domain name alerts and watching services to be put in place, as alternative systems exist to detect conflicting domain names

3.    Conducting searches to determine whether risks exist of conflicting, concurrent domain name applications based on other trademark rights; this might help you to decide if it makes sense or not to insert your rights into the TMCH database

If you would like to receive more information on this matter, or a tailored advice to the specific needs and situation of your company, feel free to contact our Trademark Department.