Protecting Your Trademarks in the New Domain Frontier: Trademark Clearinghouse – Set to Launch on March 26, 2013

The Internet Committee for Assigned Names and Numbers (“ICANN”), the organization that oversees the registration and use of Internet domains, is currently processing applications for 1917 new top-level domain names, including those in foreign languages, e.g., Chinese and Arabic (“gTLDs”). It is projected that some of the new gTLDs could be approved as early as late summer 2013. A list of the proposed gTLDs and applicants is attached. Objections to any of the proposed new gTLDs must be submitted by March 13, 2013.

In connection with the launch of the new gTLDs, to protect the rights of trademark owners, ICANN has developed an independent Trademark Clearinghouse function (“TCH”). ICANN recently announced that the TCH will open on March 26, 2013. TCH will provide, among other things, trademark authentication services by permitting trademark owners to have their eligible trademarks listed in the TCH. All new gTLD registries will be required to use TCH to support their initial or pre-launch protection mechanisms for trademark owners.

This process will help to ensure that: (i) trademark owners will be given the right to secure second level domains matching their TCH-listed marks during the initial or sunrise registration period; (ii) there are no legal claims affecting any requested domains, e.g., unresolved trademark dispute/claims; (iii) registrants receive streamlined technical support; and (iv) trademark owners are given the opportunity to challenge new second level domains that match their TCH-listed trademarks. While we anticipate that the function of the TCH service will continue to develop as this process moves forward, it is clear that recording trademarks with TCH will provide several advantages as the new gTLD domains are rolled out, including giving trademark owners an efficient way to protect their rights. Accordingly, we recommend that trademark owners prepare to record their important trademarks with the TCH as soon as it is launched.

If you would like to discuss any of these matters, including recording the company's key trademarks in the TCH or lodging an objection against any proposed gTLD, please contact us.