Brand owners looking to protect their trademarks from being adopted
as a domain name registered through one of these new (gTLDs) now have their
chance. A new “Trademark Clearinghouse” is now open that allows brand owners to
register their marks in a central repository before hundreds of these new gTLDs
(e.g “dot brands”) are launched. In this
ever-expanding online space, the Trademark Clearinghouse serves as an
additional tool for brand owners to proactively protect their trademarks from
those attempting to improperly register a domain name that includes your federally
registered trademark.
The Trademark Clearinghouse will accept and verify federally registered trademarks and trademarks protected by statute or treaty, and every new gTLD registry will be required to use the Trademark Clearinghouse database to provide trademark protection services to brand owners
Most notably, the “Trademark Claims” service will act as a
watch service for brand owners. During the first 60 day period after a new gTLD launches, the
Trademark Claims service will monitor domain name applications and send a
warning to any applicants who attempt to register a domain name matching a
trademark registered with the Clearinghouse. If the applicant still proceeds
with registering the potentially infringing domain name, ICANN will notify the
trademark owner, so the owner has an opportunity to challenge.
The Trademark Clearinghouse also includes "Sunrise Services," which
allow participating trademark owners an advance opportunity to register domain
names for new gTLD registries (for instance .bank, or .car or .app or .shoes,
.retail) in a top level domain before registration is generally available to the public.
Filing fees for registering a trademark with the Trademark
Clearinghouse must be paid annually, with discounts available where you prepay
for up to five years in advance. For
example, the filing fee for one year is $150, for three years is $435, and for
5 years is $725. Registration of a trademark with the Trademark Clearinghouse
includes linking up to ten domain names per registration. Trademark Registrations can be designated
for one, three, or five years and are re-validated once each year.
Trademarks can be registered with the Clearinghouse at any
point, but those trademark owners who register their marks with the
Clearinghouse during what ICANN deems the "Early Bird Registration Period" will be granted
extended protection. Trademarks registered during the Early Bird period will
not expire on the first anniversary of the registration date, but will instead
expire on the first anniversary of the date the Early Bird Registration Period
closes.
So, what's the moral of this story? The early bird catches the worm.
