The Internet Corporation for Assigned Names and Numbers (ICANN) has come up with an innovative solution, called “The Trademark Clearinghouse”, designed to close the gap between domain names and registered trademark rights holders.
The Trademark Clearinghouse will soon be incorporated into the new registration system for Generic Level Domains (gTLDs) to authenticate and protect registered trademark rights. There are different types of gTLDs, including geographical domains (for example, .scotland), community domains (such as .hiv), brand names (.ferrari) and generic/descriptive domains (such as .shop or .hairdresser).
ICANN will set up a database of trademarks, which have been registered at the Trademark Clearinghouse and when an attempt is made to register a new domain that contains the listed trademark, the Applicant will receive a warning letter informing them that the requested domain name may contravene registered third party rights. Prior to this, there will be a “Sunrise” period, during which trademark owners get the first opportunity to register a domain name containing their trademark. Thereafter, domain names will be awarded on a first-come first served basis.
If a trademark owner wishes to object to the registration of a domain name, he can make use of either the Uniform Rapid Suspension (URS) system or the existing Uniform Dispute Resolution procedure (UDRP). The URS system should be a quick and cost effective way to obtain suspension of an “infringing” domain registration.
Complete guidelines on the workings of the above will probably not go live until late October 2012 or after. Although it appears that some uncertainty exists surrounding the content of the guidelines, it is suggested that the cost of registering your trademark with the Trademark Clearinghouse will be $150, subject to administrative charges. Unfortunately, despite lobbying to the contrary, the rights of notification only last for a 30 day period from the creation of gTLDs and outside this, third parties may be able register the name during the period when the domains go into “Landrush”, if a proactive and vigilant approach is not adopted.
Put simply, although unregistered rights remain, the Trademark Clearinghouse system should reduce the burden on rights holders.
Contact the team at Albright IP…
We can provide further information on the Trademark Clearinghouse and instruct you on the best ways to register and protect your rights in this technologically advanced industry.
In the meantime, it is important to actively monitor the issuance of the Trademark Clearinghouse operational guidelines in readiness to register your trademarks and take advantage of the system.
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