New gTLDs and the Trademark Clearinghouse: What you need to know

It has been years in the making but new generic Top Level Domains (gTLDs) are set to launch this year. Once all the new domain extensions begin to launch things will happen at a furious pace. The first domains are expected to be released between the end of September and the end of October 2013. The first extensions out of the gate will be Internationalized Domain Names (IDNs); in other words, a domain extension in a different character set such as Chinese, Russian, Korean or Cyrillic. The IDN gTLD launch will be followed by the more standard gTLDs such as .BLOG, .APP  or .WEB. Overall, the gTLD launch will release close to 1300 new domain extensions over a period of three to five years.

Geographically oriented domains like .Quebec, .London, .NYC allow businesses to register their domain in specific locations where their markets are. Generic domains like .Food, .Gay, .Yoga allow companies to capture their niche within their domain name extension Think of car companies using .car domains and hotel chains using .hotel. It allows brands to easily promote themselves and their products, while being able to quickly convey what their company is about.

With the benefit of more choice comes greater challenges as well. With so many new extensions,  brand and trademark owners need a new strategy to protect their intellectual property across all these new domain extensions. Few companies will be able to afford a “register them all” approach.

With close to 1300 new domain extensions scheduled for release over the next three to five years, the Internet Corporation for Assigned Names and Numbers (ICANN) has implemented a process called the Trademark Clearinghouse (TMCH).  

The TMCH validates and stores trademark data in a global database. When the new domain extensions launch, if someone tries to register your trademark as a domain, a warning is displayed in real time stating that the domain infringes on a registered trademark. If that party proceeds with the domain registration, the trademark owner is notified and is given the ability to dispute the domain registration.

Trademarks that have been validated by the TMCH and have demonstrated proof of use of their trademark also have priority access to register new domain extensions during a special period called “Sunrise” before registration is opened to the general public. A trademark must be validated by the TMCH and have received a “Signed Mark Data” file in order to participate in any Sunrise registrations.

The Uniform Rapid Suspension System is intended to quickly resolve clear cases of trademark infringement at a lower cost than the existing Uniform Dispute Resolution Policy.

In addition, new gTLD applicants Donuts and Google who applied for 307 gTLDs and 101 gTLDs respectively, are considering a mechanism called Domain Protected Mark List (DPML) where they will allow one trademark submission to block all domain matches for all the extension they manage. Cost and process information have not yet been provided by either company.

The time to prepare for this expansion of new domain extensions is now. Whether there is interest for only one gTLD or multiple extensions, trademark owners should start submitting their registered trademarks to the TMCH.

It takes 34 days for submissions to be validated and if there is an error with the submission, a re-validation may take another 34 days.

Webnames.ca advises all trademark owners to submit their trademarks for validation as soon as possible to ensure trademarks are protected before the first gTLDs launch.

There is no penalty for submitting early as the term of your submission will only begin once the first new gTLD is launched.

Visit www.webnames.ca/trademark/ to learn more about the Trademark Clearinghouse and to protect your Trademark today!