Trademark Clearing House

The domain name Trademark Clearinghouse is a new service which can help trade mark owners protect their brands online.

ICANN, the international organisation responsible for issuing top level domain names has made the Clearinghouse available alongside its ongoing roll-out of new generic top level domain names (such as .bank, .tech and .luxury)(“gTLDs”).

Trade mark owners can register with the service for a relatively low cost (US$150 for one year, US$435 for three years or US$725 for five years) and gain three key forms of protection:

  1. When a new gTLD is launched, the trade mark owner will have the benefit of a “sunrise” period of at least 30 days to register the second level domain name containing the new gTLD before the gTLD is made available to anyone else. For example, if Apple, inc. registered “apple” with the Clearing House, Apple, inc. would have 30 days to register the new domain name “apple.tech” before anyone else could.
  2. If the gTLD containing the trade mark is made available to third parties after the sunrise period, any third party will be made aware of the registrant’s trade mark and required to acknowledge the trade mark owner’s rights before they can complete the domain registration.
  3. If a new domain containing the trade mark owner’s trade mark is registered by a third party, the trade mark owner will be notified by ICANN, giving the owner the opportunity to challenge the registration either through one of ICANN’s dispute resolution procedures or through the courts.

Whilst the Clearinghouse is a useful and cost effective tool, there are limits on the protection it offers. It is only available to brands which have an existing registered or validated trade mark which satisfies ICANN’s criteria. Secondly, it only protects the trade mark owner in relation to domain names which contain its exact trade mark wording. It will not identify or block registration of domain names which are highly similar or enable brand owners to identify and deal with website content, branding, search engine optimisation and other tactics which may cause confusion between the trade mark and its owners and other third parties.

In addition to considering a registration with the Trademark Clearinghouse, businesses adopting a brand protection strategy should consider:

  • securing appropriate trade mark registrations;
  • instigating clear guidelines about how the business and any franchisees, licensees or representatives may use a trade mark;
  • consider engaging a trade mark and/or domain name watching service to inform the business of any online presence which may cause confusion or dilute a brand owner’s intellectual property asset.

For more information on how to protect your brand effectively, please contact our Intellectual Property Team.