The Internet Corporation for Assigned Names and Numbers (“ICANN”) has opened a new Trademark Clearinghouse as part of its gTLD program (N.B. see here for our prior posting on gTLD’s). With this service Trademark holders can register their marks with the Clearinghouse database in order to protect their intellectual property rights in relation to the new gTLD’s which are to be released.
ICANN will provide two separate services for marks registered in the Clearinghouse. The first service is a “Sunrise Service” which gives mark holders a 30 day window prior to the release of the domains to the general public in which they can safeguard any domains that match their mark. At the end of the sunrise period, if the domains are not obtained by the trademark holder, then they will go on sale to the general public.
The second service is if someone tries registers a domain which possibly infringes on the rights of a trademark registered in the Clearinghouse database, they will get a notice that the domain conflicts with a trademark registered in the Clearinghouse database. Should they proceed with the registration, the trademark holder will then get a notice of the possible infringement and they may then take action against the domain name holder, should they wish to do so.
It will be important to have any trademarks registered with the Clearinghouse as when the new gTLD’s are released there will be the possibility of third parties registering several new domains that may directly conflict with valid marks. The registration of marks with the Clearinghouse will likely help trademark owners avoid getting to the stage of a domain name dispute, as they will have the opportunity to elect to purchase conflicting domains in advance of their release to the public.
Registration with the Clearinghouse can be made here. In addition, we are happy to assist any of our clients in completing their registration.