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ICANN's Trademark Clearinghouse - Intellectual Property Alert
March 20, 2013
Parsons Behle & Latimer

With the Impending Expansion of Generic Top Level Domains, Brand Owners Should Take the Necessary Steps to Protect Their Trademarks

In less than a week, ICANN’s Trademark Clearinghouse will launch, enabling brand owners to take advantage of broad protections against the upcoming expansion of generic top level domains (gTLD). ICANN, the organization that manages domain names for internet sites, is currently evaluating the nearly 2000 proposed gTLDs registries and will begin announcing the results of its review in late March 2013.

ICANN plans to allow thousands of new gTLD registries in addition to the 22 top-level domains currently in existence (e.g., .com, .net, .org, .gov). These new gTLDs will include words in non-Latin languages, such as Chinese, and may be specific to a business or product, such as .apple, .espn, or .insurance. Obviously, this explosion of gTLDs will create new challenges for trademark owners, who will now find it even more difficult to monitor the use and misuse of their marks on the Internet.

In an effort to mitigate this burden, ICANN has established its Trademark Clearinghouse – a central repository of verified trademarks that will eliminate the need for trademark holders to work with multiple verification databases for protection as each new gTLD is launched. All new gTLD operators will be required to utilize the Clearinghouse.

The Trademark Clearinghouse will serve two primary functions: facilitating the “Sunrise Period” for each new gTLD registry, and providing a Trademark Claims Service. The Sunrise Periods, which ICANN require for all new gTLDs, will provide brand owners a short period of time to register domain names that correspond to their marks before those domains are available to the general public. The Trademark Clearinghouse will validate all applications for domain name registrations submitted during these Sunrise Periods.

Immediately following the Sunrise Period will be the Trademark Claims Service, which will notify brand owners if someone attempts to register a domain name that is the same as a trademark that has been verified by the Trademark Clearinghouse. In addition, the person attempting to register a domain with a potentially infringing trademark will receive a warning notice that the domain matches a mark in the Clearinghouse.

What Can You Do?

To take advantage of the benefits of the Trademark Clearinghouse, brand owners must submit their trademarks for verification by the Clearinghouse. Applicants will need one of the following:

(1) A nationally or regionally registered trademark, from any jurisdiction

(2) Any trademark that has been validated through a court of law or other judicial proceeding

(3) Any trademark protected by a statute or treaty

(4) Other marks that constitute intellectual property

In addition, if brand owners intend to register domain names during the Sunrise Periods, they must also provide “proof of use” of their trademark, such as labels, tags, containers, advertising or marketing materials, photographs, or website links.

Now is the time for brand owners to take action. The Trademark Clearinghouse currently plans to launch on March 26, 2013. Brand owners should develop strategies for protecting their trademark portfolios in light of the imminent expansion of gTLDs, and should review the list of pending gTLD applications to determine whether any of them present either new opportunities or potential threats. Brand owners should also decide whether their strategies will include submission of marks to the Trademark Clearinghouse, to take advantage of the centralized protections that the Clearinghouse intends to offer.

Please contact us if you have any questions or we can be of assistance in helping you determine your own strategy regarding the Trademark Clearinghouse.

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