TRADEMARK CLEARINGHOUSE


ARE YOU


PROTECTED? THE TRADEMARK CLEARINGHOUSE


Under its new generic top-level domain programme, ICANN has set up the Trademark Clearinghouse to help assuage the concerns of trademark owners. Petter Rindforth takes a look at what the Clearinghouse will offer.


T e most recent ICANN public meetings were held in Prague in June and Toronto in October, 2012. T e work on the implementation model for all new top-level domains (TLDs) proceeded, and once up and running it will include some signifi cant new rights protection mechanisms for trademark owners that are not available in the current space.


One of those is the Trademark Clearinghouse, described as a single database of authenticated registered word trademarks that will provide data to support trademark claims and sunrise services. T e Clearinghouse will be operated by a third party under licence or agreement with ICANN and is intended to replace the need for trademark owners to register in multiple databases as the new generic TLDs (gTLDs) are launched.


All new gTLD operators are required to use the Clearinghouse to support their pre-launch or


initial launch period


a domain name identical to their mark is registered during the launch of a new TLD.


It should defi nitely be used by all word trademark owners, but they should also be aware that the Clearinghouse does not remove cost or prevent typosquatting. Inclusion in the Clearinghouse is not proof of any right, nor does it create any legal rights as such.


T e Clearinghouse database will be structured to report to registries when registrants are attempting to register a domain name that is considered an ‘identical match’ with the trademark in the Clearinghouse, meaning that the domain name consists of


the complete and identical textual


elements of the mark. Some trademarks entitled to


the Clearinghouse inclusion in include characters that


are impermissible as domain names in the domain name system (DNS), such as colours, punctuation and design elements.


rights protection


mechanisms (RPMs). T ese RPMs, at a minimum, must consist of a trademark claims service and a sunrise process. T e data will have to be renewed periodically by any mark holder wishing to remain in the Clearinghouse.


Trademark owners who fi le claims with the Clearinghouse will also receive notice whenever


42 T e Clearinghouse will change certain


such characters in a trademark into DNS- permissible equivalent characters, for the mandatory trademark claims and sunrise services. For example, the commercial at (@) and the ampersand (&) symbols can be omitted, replaced by a hyphen, or replaced by the canonical translation of the word ‘at’ or ‘and’


Trademarks Brands and the Internet Volume 1, Issue 4


in any offi cial language of the jurisdiction from which the trademark right is protected and verifi ed.


Any other impermissible character can be omitted or replaced by a hyphen. Trademark owners will have the ability to select which of the permissible variations are to be used by the Clearinghouse for sunrise and trademark claims services.


However, no plurals and no ‘marks contained’ would qualify for inclusion. In this respect, ‘TRADEMARK Protection’ versus ‘trademarkprotection.domain’ or ‘trademark- protection.domain’ would be considered identical, but not ‘TRADEMARK-PROTECTION’ versus ‘trademarkprotection.domain’. ICANN’s explanation is that the hyphen is a DNS- permissible character and therefore ineligible to be translated into some other value for the purposes of an identical match. Further, ‘TRADEMARK Protection’ will not be considered identical to plural versions such as ‘trademarkprotections.domain’.


Sunrise and proof of use


In order to combat infringement, all new TLD operators are obliged to conduct sunrise periods, giving trademark owners an opportunity to register trademarks as domain names before a given TLD goes live. Eligible participants will


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