Introduction of New Gtlds: Trademark Owners and the Trademark Clearinghouse

The Internet Corporation for Assigned Names and Numbers ("ICANN") recently announced that the newly established Trademark Clearinghouse will launch on March 26, 2013. The Trademark Clearinghouse will function as a centralized database of trademark information to facilitate the protection of trademark rights during the expansion of the generic Top Level Domains ("gTLD"), which are being introduced over the next few months. A gTLD is the term to the right of the "dot" in a URL, for example .com and .org. A process for creating new gTLDs (e.g. .car or .photo) began in 2012, and the Trademark Clearinghouse is intended to address the potential for registration of domain names in the new gTLDs that conflict with trademark owners' rights.

Registering a trademark with the Trademark Clearinghouse offers two significant benefits to trademark owners: (1) the right to participate in a thirty (30) day "sunrise period" following the launch of each new gTLD, during which period the trademark owner has priority to register its trademark as a domain name in such new gTLD (for example, yourmark.test); and (2) in the event that a third party seeks to register a domain name in a new gTLD that is identical to a mark registered with the Trademark Clearinghouse, the trademark owner will be notified.

Following the close of the sunrise period for each new gTLD, there will be a sixty (60) day period in which an applicant for a domain name in the new gTLD will be notified of any identical trademark registered with the Trademark Clearinghouse. If the domain name application proceeds, notice will be provided to the trademark owner so that it may consider appropriate action.

A trademark may be registered with the Trademark Clearinghouse for a one, three or five year period, with registration fees from approximately $150 for a one year period. Trademarks that are (i) protected by treaty or statute, (ii) validated by a court, or (iii) registered nationally or regionally are eligible for recordation with the Trademark Clearinghouse.

With the initial wave of new gTLDs expected to be approved this spring, trademark owners should consider registering their trademarks with the Trademark Clearinghouse to limit the likelihood of infringement or cyber-squatting of their marks. Trademark owners should also consider, in collaboration with their marketing teams, whether it would be beneficial to register domain names in any new gTLDs.