Internet & Technology Law Alert - Beyond the DotCom: ICANN’s Trademark Clearinghouse Provides Time-Sensitive Brand Protection on the Internet

The Internet Corporation for Assigned Names and Numbers (ICANN), the agency that oversees the domain name system, is planning to launch what it calls a Trademark Clearinghouse on March 26, 2013 at www.trademark-clearinghouse.com to help brand owners protect their trademark rights online as new generic Top-Level Domain Names (New gTLDs) become available mid-2013.

There are currently over 20 gTLDs in operation such as .com, .net, and .org. Soon, there may be hundreds of the New gTLDs. A list of the current New gTLDs and the respective applicants are available at http://newgtlds.icann.org/sites/default/files/reveal/strings-1200utc-13jun12-en.pdf.

Many of the New gTLDs will correspond with generic terms such as .business, .fashion, .book, .dance, .computer and .beer. Still others that register will correspond with brand names, such as .google, .hbo, or .jaguar.

The Trademark Clearinghouse

Beginning March 26, 2013, trademark owners can submit trademark data to the Trademark Clearinghouse. The Trademark Clearinghouse is a mechanism designed to prevent the unauthorized use of registered trademarks in the second level of the New gTLDS (for example, www.yourtrademark.gtld).

For an annual fee, trademark owners will be able to record their registered trademark with the Trademark Clearinghouse. This mechanism provides two primary benefits:

1. Sunrise Registration: Trademark Owners will have the opportunity to secure second level domain names that correspond with their registered trademarks before the general public.
2. Notification of Registration: The Trademark Clearinghouse will alert trademark owners when someone else seeks to secures a domain name that matches their registered trademark.

With the huge increase in number of New gTLDs, brand owners are advised to consider recording their registered trademarks with the Trademark Clearinghouse. The Trademark Clearinghouse provides a relatively simple means of proactively protecting the online brand presence of trademark owners. Otherwise, brand owners may be faced with the substantial costs and uncertainty of seeking to force transfer of domain names that incorporate the owners’ trademarks.

For more information or if you have questions about this topic, please contact the Barnes & Thornburg attorney with whom you work, or a member of the firm’s Internet & Technology Group. You can also visit us online at www.btlaw.com.

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