Trademark Clearinghouse

The Internet Corporation for Assigned Names and Numbers ("ICANN") has seen its Trademark Clearinghouse open for business today, 26 March 2013.

For those unfamiliar with the Trademark Clearinghouse:

"The Trademark Clearinghouse (TMCH) is the most important rights protection mechanism built into ICANN’s new gTLD program. Operators of new gTLDs will be responsible for implementing certain rights protection mechanisms, supported by the Trademark Clearinghouse. The Clearinghouse allows brand owners to submit their trademark data into one centralized database, prior to and during the launch of new gTLDs. The Clearinghouse will open on March 26.

• Trademark holders will be able to submit their trademark information to a centralized repository.
• After verification, the trademark holder has fulfilled the basic (most important) condition to be able to register its corresponding domain name during the pre-registration period of multiple TLDs – also known as the "Sunrise period".
• Trademark holders will also have the option to be notified when someone registers a domain name that matches their record in the Clearinghouse."

Owners of famous brands will look to register their trade marks with the Clearinghouse. However, with inexpensive fees, the Clearinghouse is accessible to smaller brand owners - particularly where these brand owners would focus on registering only their house mark with the Clearinghouse.

Fees can be paid annually, which when compared to the duration of trade mark registrations is too often. Thankfully, fees can also be paid for three year or five year terms too with some small discounts available for the longer periods.

The Trademark Clearinghouse is expected to be a useful tool in the continued battle against cybersquatters.

All is revealed: the newly applied for gTLDs

So yesterday was 'Reveal Day' when ICANN provided a list of new gTLDs applied for, sometimes referred to as .BRAND although they are not exclusively for trade marks.

There will be some of interest to legal entities with the applications for .INC, .LLP, .LTD, .GMBH, etc. which could enable them to register domain names beyond .COM.

Applications have been made for obviously desirable gTLDs: .APP, .GAME, .HOTEL, .MOVIE, .MUSIC, .TICKETS, the optimistic .LOVE and something I appear to order on the internet far too regularly: .PIZZA.

There are also geographic applications in which domain names will presumably be issued to applicants with a connection or residence. Such examples include from France, .ALSACE and .CORSICA and from South Africa, .CAPETOWN, .DURBAN, and a more familiar and easy to spell, .JOBURG. These applications seem to have been made on behalf of regional organisations and governments, although I spotted .CYMRU (this meaning Wales in Welsh) was applied for by Nominet, who administer the ccTLD for the United Kingdom.

When it comes to trade marks, it is no surprise that some of the world's biggest brand owners have applied so we see the likes of .MICROSOFT, but it is perhaps more interesting to see who has not applied.

Using Interbrand's top 25 brands (2011), there is no .GE or .HP as it appears two-letter gTLDs are not allowed but then there are no applications for .GENERALELECTRIC or .HEWLETTPACKARD either. H&M would have needed to spell out their ampersand (.HANDM) and there is no application here. There are also no applications for .DISNEY, .MERCEDES, .GILLETTE or .LOUISVUITTON and, arguably most suprisingly, for .COCACOLA or .COKE; .PEPSI is also not subject of an application. 

It is interesting how different brand owners have considered an application necessary or not. They were very expensive, but to massive brands still surely not out of their reach.

There could be a battle for .GUARDIAN which has been applied for by a British newspaper and American life insurance company.

L'Oréal have filed a number of applications. A number of these are for their brands but they have also decided to go for some generic words too: .BEAUTY, .HAIR, .MAKEUP, .SALON, .SKIN plus one in non-Latin characters.

In fact, generally speaking there have been many applications for gTLDs in non-Latin characters.

Finally, there is also an application for .WTF (used as a euphemism in English) and .SUCKS, which one can only anticipate would be highly controversial.

There are now seven months in which objections on various grounds can be filed with an appropriate Dispute Resolution Service Provider. For brand owners, the 'Legal Rights' avenue is likely to be of most interest and objections for these will be handled by our colleagues at WIPO. I wonder how many are going to be filed...