The new gTLD Trademark Clearinghouse: opening soon
The new generic top-level domain (gTLD) programme will soon bring a flood of diversity to the Internet’s domain name system. Over 1,900 new gTLD applications have been submitted for gTLDs such as “.apple”, “.shoes” or “.llc”, and the Internet Corporation for Assigned Names and Numbers (ICANN), the organisation that devised the programme, expects technical testing for the new domains to begin in April 2013. While some applicants intend to use their new gTLDs solely for themselves, others intend to sell second-level domains to the public.
The potential for cybersquatting raises legitimate concern among rights holders, as opportunists may attempt to register a mark as a second-level domain (eg, "nike.shoes" or "nike.sneakers" registered to someone other than Nike). Accordingly, ICANN is establishing several new procedures to address these concerns.
Central to ICANN’s plan is the Trademark Clearinghouse, a centralised database of US and foreign trademarks to facilitate dispute resolution in the new gTLD programme. Trademark owners that submit their marks for inclusion in the clearinghouse will receive automatic alerts when a second-level domain name matching their trademark is registered (akin to a trademark register watch notice). In addition, individuals registering a second-level domain name will receive official warnings if the domain name matches a trademark in the clearinghouse, putting them on notice of the mark.
The clearinghouse is also an important element in ICANN’s two new dispute resolution procedures: the Uniform Rapid Suspension system (URS) and the Post-delegation Dispute Resolution Procedure (PDDRP). The URS is intended to be a less expensive, quicker procedure for removing infringing domain names than the already existing Uniform Dispute Resolution Policy process. If a rights holder registers its trademark with the clearinghouse, it need not provide evidence of use of the mark when filing a URS complaint. Similar advantages apply to PDDRP complaints.
Registration for the clearinghouse opens on 26th March 2013. For the first 30 days – the “sunrise period” – trademark holders will be able to register with the Trademark Clearinghouse before second-level domains may be offered to the general public. Deloitte Development LLC has been appointed the sole validator for trademark submissions and trademark holders must submit their marks to Deloitte’s portal only once rather than applying and paying fees for each gTLD. The fee charged by the clearinghouse for registering starts at US$150 per trademark per year.
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