IP information
Domain names - trade mark clearinghouse
By Sarah Chatterley.
It is becoming increasingly common for intellectual property to be used on the internet by third parties without the authorisation of the IP owner. Whilst there are a number of ways trade marks are being misappropriated, there are several ways a trade mark used by others can be policed.
As all trade mark owners know, it is becoming increasingly complicated to police online use of a trade mark. The situation will worsen with the launch of new generic Top-Level Domains (gTLDs, ie as a .brand domain), the purpose of which is to increase competition in the domain name space. The list of new gTLDs includes, amongst others, .accountant, .attorney, .finance, .news, .shop, .app and .music. Due to the numerous variations available it won’t be possible to protect a company’s key brands across all domains by filing defensive registrations, even if you have ample resources.
The Trademark Clearinghouse (TMCH), was established by ICANN (Internet Corporation for Assigned Name and Numbers, a non-profit organisation which is the global coordinator of internet domains and domain names), and acts as a repository of data where trade mark owners list their mark (subject to certain criteria) in return for:
- Eligibility to register their mark as a gTLD in the sunrise period for each new gTLD as and when it comes into effect (except for new gTLDs that are to be exclusive to specific organisations or other “closed” groups); and
- TMCH providing a warning notice to any person who attempts to register a domain name which is identical to a trade mark registered with them. If the applicant still registers the domain name in spite of this, then a notice is sent to the trade mark owner, the domain name registry and the applicant, so that the trade mark owner has the opportunity to complain.
ICANN is also planning to implement a rights protection mechanism for trade mark rights holders experiencing the most clear-cut cases of infringement. There is no requirement for a trade mark to be recorded in the Clearinghouse for it to be protected under the Uniform Rapid Suspension Service, but the mark must be eligible for inclusion in the Clearinghouse and there must be proof of use of the mark. A complaint mechanism will also be available to trade mark owners to report .gTLD registries which consistently permit third parties to register infringing second level domain names.
If your trade marks are being undermined by third party domain name registrations, then this could be a useful tool which gives you early notice of potentially conflicting domain names. We recommend taking early action if you want to register a domain name under this program since a vast number of the applications for the new gTLDs is expected, and also because validation of rights, including submission of proof, is part of the registration process. Click here for more information http://trademark-clearinghouse.com/content/what-clearinghouse.
However, those brand owners thinking of using the Trademark Clearinghouse simply as a monitoring service to enable them to challenge third party domain name applications (especially if they do not want to take advantage of being able to file a domain name application during the sunrise period) should perhaps consider subscribing to or employing more traditional methods of policing their trade mark rights instead, including commercial trade mark watching services, infringement proceedings and established domain name resolution services such as Uniform Domain Name Dispute Resolution, as well as internet monitoring services, which may be more efficient and cost effective for their purposes.
Including brand and domain monitoring services in some form or another within your budget is becoming ever more important now that the domain name and internet landscapes are changing so fast. More importantly though, trade mark owners should ensure that their trade mark is registered and maintained in all jurisdictions in which it is used, as registrations in addition to use add muscle to the legal remedies available to the owner in enforcing their rights.
If you would like further information about the above, or in relation to any aspect of intellectual property please contact us.
This news item may contain information of general interest about current legal issues, but does not contain legal advice.